Complainant is Microsoft Corporation of Washington, United States of America, represented by Olswang LLP, United Kingdom.
Respondent is Russell Warner of Oxford, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with SafeNames Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2012. On January 20, 2012, the Center transmitted by email to SafeNames Ltd. a request for registrar verification in connection with the disputed domain name. On January 24, 2012, SafeNames Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on January 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 17, 2012.
The Center appointed Ross Carson as the sole panelist in this matter on February 21, 2012. 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.
Respondent filed a Supplemental Filing with the Center on February 22, 2012 advising the Center that all future correspondence in this matter should be addressed to the owner Mr. Michael Mcgee. The Supplemental Filing consisted of the letter to the Center and a copy of a letter dated February 21, 2012 from a corporation operated by Respondent to the solicitors for Complainant. The Center by e-mail dated February 24, 2012 informed Respondent that the Supplemental Filing was being forwarded to the Panel which has discretion to entertain a Supplemental Filing in circumstances defined by the Rules. For reasons provided under the heading “Decision”, the Panel has refused to entertain the Supplemental Filing for not being timely filed and not containing compelling evidence supporting a finding of exceptional circumstances sufficient to warrant the Panel exercising its discretion to accept the Supplemental Filing under the Rules.
On March 2, 2012, Complainant filed a Supplemental Filing which the Center brought to the attention of the Panel. For similar reason discussed further below, the Panel has also declined to admit this unsolicited Supplemental Filing from Complainant. 4. Factual Background
Complainant is a multinational computer technology corporation which develops, manufactures, licenses and supports a range of goods and services connected with computing in association with its trademark MICROSOFT. It was founded in April 1975. Complainant's MICROSOFT name and brand has become one of the biggest and most recognized brands in the world. MICROSOFT is a household name and has been ranked by Interbrand at either number 2 or 3 in the top ten global brands by Interbrand for each of the past ten years.
Complainant has generated significant revenue under the MICROSOFT mark. Complainant has also spent significant sums in developing and publicising its brands. In the year ended June 30, 2006 Complainant’s turnover was US Dollars 44,282 billion and US Dollars 9,818 was spent in advertising and marketing. Complainant is currently involved in the development of a 'slate' device (the "Slate"), a tablet computer whose hardware is built by Samsung but which will use Complainant's Windows 8 operating system. The Slate is currently expected to go on sale at some time in 2012. The intense speculation in the press regarding this tablet, and more recently reviews of demo models, discuss the device in close connection with Complainant and MICROSOFT Windows 8.
Complainant owns a number of UK trade mark rights in the name MICROSOFT, including:
Number Mark Filing Date Class(es)
UK 1121920 MICROSOFT 8 October 1979 9
UK 1177538 MICROSOFT 29 June 1982 16
UK 2017986 MICROSOFT 19 April 1995 38
Complainant owns the domain name registered May 1, 1991. In addition to this, Complainant owns a number of domain names which contain the Microsoft trade mark, all of which resolve to Complainant's Website “www.m”. These additional domain names include:
Domain Name Status
1
M
Registered by Complainant
2
M
Registered by Complainant
3
M
Registered by Complainant
4
M
Registered by Complainant
5
M
Registered by Complainant
6
M
Registered by Complainant
7
M
Registered by Complainant
8
M
Registered by Complainant
9
M
Registered by Complainant
10
M
Registered by Complainant
The disputed domain name was created on August 22, 2011. 5. Parties’ Contentions A. Complainant A.1 Identical or Confusingly Similar
Complainant submits that the disputed domain name consists of Complainant's trade mark MICROSOFT and the word SLATE, which in combination with Complainant's name strongly evokes Complainant. Complainant further submits that the disputed domain name will therefore inevitably confuse the public into thinking that there is some connection between Respondent and Complainant. A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has no legitimate interest in the disputed domain name. Complainant submits that its registered trademarks and domain names refer to, and are indicative of, the business of Complainant only. Respondent is in no way connected to or associated with Complainant. Further, Complainant has at no point authorized or given permission to Respondent to provide goods or services under or by reference to the disputed domain name and/or any other name or mark comprising of Complainant's MICROSOFT trademark.
Complainant further submits that Respondent actively intends to confuse the public into thinking that the disputed domain name (and in the future its website) is connected with Complainant. This is evidenced by the conversation between Respondent and investigators Farncombe International, in which Respondent stated that he has the "backing and accreditation" of Complainant, when this is not the case.
Complainant states that prior to carrying out their investigations into the disputed domain name, Complainant had never heard of Respondent. As far as Complainant is aware, Respondent has no trade mark applications or registrations anywhere for the words "Microsoft" or "Slate".
Complainant states that Respondent's website is currently a holding page. However, Respondent has stated that he intends to use the disputed domain name to import and distribute Complainant's Windows Slate product, due to enter the marketplace in 2012. Respondent is not in any way authorized by Complainant, although he has stated that he is backed and accredited by Complainant.
Complainant further states that Respondent’s intention to use the disputed domain name to offer similar or identical goods and services to those provided by Complainant does not represent a "legitimate non-commercial or fair use of the domain name" pursuant to Paragraph 4(c)(iii) of the Policy. Respondent is clearly intending to use its website for commercial gain as he intends to use it to sell Complainant's own goods and/or services to the UK public This is one of the target audiences of Complainant as evidenced by the UK section of Complainant's website “www. m”.
Complainant further states that Respondent's intended use of the disputed domain name is to deliberately attempt to divert customers away from Complainant's website by using an identical and/or confusingly similar name to provide confusingly similar or identical goods and services. Respondent is intending to use Complainant's well-known brand to attract customers to its website and thereby to knowingly mislead internet users and divert sales from Complainant.
Complainant states that it develops, manufactures, licenses and supports a range of goods and services connected with computing. Respondent's intended use of Complainant's MICROSOFT brand to sell goods and/or services may extend to selling goods or services which may be of a lower quality than that of Complainant's, which would have the effect of tarnishing the reputation of Complainant. Complainant will have no control over the quality of the goods or services provided by Respondent and this use of the disputed domain name by Respondent could severely damage the reputation for quality enjoyed by Complainant, if the public was confused into believing there was an association between Complainant and Respondent.
Complainant states there is no indication that Respondent intends to make any use of, or has made any preparations to use, the disputed domain name in connection with a "bona fide offering of goods or services" pursuant to paragraph 4(c)(i) of the Policy. Respondent intends to offer competing goods and services by using an identical and/or confusingly similar name to Complainant's MICROSOFT trademark. This does not represent a bona fide offering of goods or services.
Complainant submits that Respondent's intended use of the disputed domain name is an intentional infringement of Complainant's MICROSOFT trademark, and is intended to ride on the coat tails of Complainant's well-known reputation. As a result, the disputed domain name has not been, and is not intended to be, used in connection with a bona fide offering of goods or services. As explained, Complainant believes that Respondent has registered the disputed domain name and intends to use it in bad faith. A.3 Registration in Bad Faith
Complainant states that it commenced use of its MICROSOFT trademark in commerce in association with computers in 1975. Complainant further states that as a result of the extensive and prominent use of the mark, MICROSOFT had become a famous mark in the United Kingdom prior to the registration of the disputed domain name on August 22, 2011. As Complainant has been operating for over 40 years in association with its trademark MICROSOFT and has been consistently ranked in the top three biggest brands for each of the past ten years, and given that Respondent has acknowledged that he intends to import and distribute Microsoft Slates using the disputed domain name, Complainant submits that it is inconceivable that Respondent was not aware of Complainant and its MICROSOFT trademark at the time it acquired the disputed domain name. A.4 Use in Bad Faith
Complainant states that paragraph 4(b) of the Policy set out four examples of circumstances in which "if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".
Complainant further states that paragraph 4(b)(iii) notes the circumstance where Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor". The manner in which this Respondent intends to use the disputed domain name evidences that this is clearly his intention. By providing identical goods and/or services to Complainant, Respondent intends to disrupt Complainant's business by creating or promoting a website offering Microsoft Slate products.
Complainant submits that potential consumers of Complainant's products who may in the future be inadvertently led to Respondent's website may not continue to search for the genuine website at “www.m” and may buy instead from Respondent's website. This will thereby disrupt Complainant's business by leading to a loss of sales.
Complainant states that paragraph 4(b)(iv) of the Policy lists another circumstance that can be evidence of bad faith, which is that "by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website location or of a product or service on your website or location".
Complainant further states that Respondent's stated intention is to use the disputed domain name to distribute Complainant’s product. In doing so, customers will inevitably be confused as to the source, sponsorship, affiliation, or endorsement of that website. Indeed as noted above, Respondent has specifically said that the disputed domain name is backed and accredited by Complainant, which is not the case. Respondent's intention is further demonstrated by the fact that he registered a company named Microsoft Slate Limited on 22 August 2011, an action which Complainant submit is intended to and which will create further likelihood of confusion between Respondent and Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Procedural Issue: Respondent and Complainant’s Supplemental Filings
On February 22, 2012 Respondent forwarded an e-mail to the Center accompanied by an attachment advising the Center that all future correspondence in this matter should be addressed to the owner. The attachment is a letter, dated February 21, 2012 from Liquid Finance Limited, a company operated by Respondent, T/A Mortfactor addressed to counsel for Complainant. The subjects of the letter are: “Micro Softslate Ltd,(misspelling) ,and ”. In the letter, Respondent’s company advises that it agreed to undertake agreed contractual services on behalf of an Irish resident identified as Michael Mcgee at a stated address in Ireland and the UK. Respondent states that as part of the services access was given to the Irish resident to the on-line registration services used by Respondent’s company.
Complainant retained private investigators to review public records relating to Respondent’s alleged connection with Complainant’s Microsoft Slate product. The private investigators report which was filed as an Annex to the Complaint shows that a UK corporation named Microsoft Slate Ltd was incorporated on August 22, 2011. The sole director of the company is Russell Edward Warner, having the same home address as Respondent. Respondent created the disputed domain name on August 22, 2011. Microsoft Slate Ltd is itself the creater of the domain name , which was created on August 20, 2011. Respondent advised investigators retained by Complainant that Microsoft Slate Ltd is to be a distributor for the UK and Ireland of the Microsoft Slate product due for launched by Complainant in 2012. Respondent further informed Complainant’s investigators that Microsoft Slate Ltd works with German, Belgian and Chinese partners with full accreditation by Complainant.
In the letter supporting the Supplemental Filing, Respondent’s company states that: “In some cases, due to historical registration details, the addresses applied to the process included a Private Residence address (Respondent’s residence address). Respondent’s company went on to state: “All ownership under the engagement terms are with Mr. Mcgee.” The letter goes on to state: “As a result of the engagement and the NDANCC signed at the time any future correspondence in respect of these matters should be addressed to the owner. At no time from the period of registration, on the owners specific instructions, have any further actions been taken. The appropriate steps have been implemented regarding the ownership details.”
The Center, by e-mail dated February 24, 2012, informed the Parties that electronic communication relating to the proceeding were to be forwarded to the Parties at their electronic addresses. The Center further advised the Parties that no express provision is made in the Rules for Supplementary Filings by either Party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. The Center further advised the Parties that: “Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings ( including further statements or documents) received from either Party. Accordingly, the Panel will be informed of the Center’s receipt of the Supplemental Filing. It will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.
Rule 1 of the Rules is entitled “Definitions”. In Rule 1,” Respondent means the holder of a domain- name registration against which a complaint is initiated. The Whois information for the disputed domain name discloses that Respondent is the holder of the disputed domain name. On January 20, 2012 Complainant transmitted a copy of the Complaint to Respondent (domain-name holder) as required by Rule 3(b)(xii) of the Rules. On January 27, 2012 the Center formally notified Respondent of the Complaint. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2012. Respondent did not submit any response. On February 17, 2012 the Center notified Respondent’s default. On February 22, 2012 Respondent filed a Supplementary Filing requesting, in effect, that John Mcgee be shown as the holder of the disputed domain name based on the submissions contained in Respondent’s corporations letter dated February 21, 2012 to the solicitors for Complainant.
Rule 10 is entitled “General Powers of the Panel”. Rule 10(c) provides that: “The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
The Complaint was communicated to Respondent on January 20, 2012 and on January 27, 2012 the Center formally notified Respondent of the Complaint and advised Respondent that it had 20 days in which to file a response. Rule 10 (c) requires that the Panel ensures that the administrative proceeding takes place with due expedition. Periods of time are only to be extended in exceptional circumstances. The Panel has reviewed the material filed by Respondent and finds no evidence supporting a delay of one month from receipt of the Complaint or 20 days from formal notification of the Complaint before requesting an amendment to the identity of the domain-name holder and all the procedural implications and delays that must follow from such a ruling. Respondent has not provided an agreement between Respondent and the alleged owner or other evidence of exceptional circumstances that support further delay.
The Panel has noted the Supplemental Filing which was filed by Complainant on March 2, 2012, as well as the unsolicited nature of this filing, and the absence of any agreement between the parties to warrant the submission of such pleadings. The Panel further notes that Complainant’s Supplemental Filing was received after the Panel reached a view on the merits, and the Panel sees no reason to admit such further material in order to resolve the matter. The Panel accordingly declines to admit this Supplemental Filing. Substantive Issues
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of registered trademarks for and including MICROSOFT registered in the United Kingdom in relation to the goods and services described in section 4 above. Complainant’s registered trademarks were in use and registered many years prior to the date of registration of the disputed domain name on August 22, 2011.
The disputed domain name incorporates the entirety of Complainant’s trademark MICROSOFT. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See eBay, Inc vs. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (finding that the domain name incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark); Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141 (finding confusingly similar to complainant’s AUXILIUM name and mark).
The inclusion of the top level domain descriptor “.org” in the disputed domain name does not affect a finding of confusing similarity. WIPO Administrative Panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademarks MICROSOFT. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any trademarks confusingly similar thereto. As far as Complainant is aware, Respondent has no trade mark applications or registrations anywhere for the words "Microsoft" or "Slate".
As evidenced by the conversation between Respondent and Farncombe International, investigators retained by Complainant, Respondent stated that he has the "backing and accreditation" of Complainant, when this is not the case. Prior to carrying out their investigations into the disputed domain name, Complainant had never heard of Respondent.
Respondent's website is currently a holding page. However, Respondent has stated that he intends to use the disputed domain name to import and distribute Complainant's Windows Slate product, due to enter the marketplace in 2012. Respondent is not in any way authorized by Complainant, although he has stated that he is backed and accredited by Complainant. Respondent's intention to use the disputed domain name to offer similar or identical goods and services to those provided by Complainant does not represent a "legitimate non-commercial or fair use of the domain name" pursuant to Paragraph 4(c)(iii) of the Policy. Respondent is clearly intending to use its website for commercial gain as he intends to use it to sell Complainant's own goods and/or services to the UK public, which is one of the target audiences of Complainant.
There is no indication that Respondent intends to make any use of, or has made any preparations to use, the disputed domain name in connection with a "bona fide offering of goods or services" pursuant to paragraph 4(c)(i) of the Policy..
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that
Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith. C. 1 Registered in Bad Faith
Complainant has established that it is the owner of registered trademarks for and including MICROSOFT registered in the United Kingdom in relation to the goods and services described in section 4 above. Complainant’s registered trademarks were in use and registered many years prior to the date of registration of the disputed domain name on August 22, 2011. Complainant has been operating for over 40 years in the United Kingdom in association with its trademark MICROSOFT and has been consistently ranked in the top three biggest brands for each of the past ten years. Respondent acknowledged that he intends to import and distribute Microsoft Slates using the disputed domain name.
The Panel finds on a balance of probabilities that Respondent was aware of Complainant and its MICROSOFT trademark at the time it created the disputed domain name on August 22, 2011. C.2. Domain Name Used in Bad Faith
Paragraph 4(b) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Complainant retained private investigators to review public records relating to Respondent’s alleged connection with Complainant’s Microsoft Slate product. The private investigators report which was filed as an Annex to the Complaint shows that a UK corporation named Microsoft Slate Ltd was incorporated on August 22, 2011. The sole director of the company is Russell Edward Warner, having the same home address as Respondent. Respondent registered the disputed domain name on August 22, 2011. Microsoft Slate Ltd is itself the owner of the domain name created on August 20, 2011. Respondent advised investigators retained by Complainant that Microsoft Slate Ltd is to be a distributor for the United Kingdom and Ireland of the Microsoft Slate product due for launched by Complainant in 2012. Respondent further informed Complainant’s investigators that Microsoft Slate Ltd works with German, Belgian and Chinese partners with full accreditation by Complainant.
Complainant’s evidence that it had never heard of Respondent prior to becoming aware of the disputed domain name and never authorized Respondent to use its MICROSOFT trademark in association with any product is preferred over Respondent’s statements to Complainant’s investigators that Microsoft Slate Ltd was accredited to sell Complainant’s Microsoft Slate Products. Respondent's stated intention is to use the disputed domain name to distribute Complainant's products to Internet customers using the disputed domain name will inevitably confuse Internet users as to the source, sponsorship, affiliation, or endorsement of the website and the products offered on the website.
Respondent's bad faith is further demonstrated by the fact that he registered a company named Microsoft Slate Limited on 22 August 2011 and that Microsoft Slate Ltd of which Respondent is the sole director registered the domain name on August 20, 2011. Complainant’s Microsoft Slate product is intended to use Microsoft 8.
Respondent's website is currently a holding page. However, Respondent has stated that he intends to use the disputed domain name to import and distribute Complainant's Windows Slate product due to enter the marketplace in 2012. Even if Respondent were not to use the disputed domain name but simply to hold the disputed domain name, previous UDRP panels have found that the registration and holding of domain names which is confusingly similar to well- known trademarks constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) when such domain names cannot be used without causing confusion. See, Comerica Inc. v. Horoshiy, Inc,, WIPO Case No. D2004-0615; where the panel found: ”The very act of having acquired the domain names incorporating the complainant’s mark raises the probability of respondent using them in a manner that is contrary to complainant’s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such disputed names can be put that would not violate complainant’s rights”. See, Telstra Corporation Limited. v. Nuclear Marshmellows,WIPO Case No. D2000-0003 where the panel found: ”Any realistic use of the domain name must misrepresent an association with the Complainant and its goodwill, resulting in passing off breaches of Australian consumer protection legislation, and trademark infringements”.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent intend to use the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complaint satisfies the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: March 1, 2012
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