WIPO

 

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Global Net 2000, Inc.

Case No. D2000-0554

 

1. The Parties

The Complainant in this administrative proceedings is Microsoft Corporation, a Washington corporation with its principal place of business in Redmond, Washington, U.S.A.. The Respondent is Global Net 2000, Inc., the address of which appears to be 166 North Sofrevari St., (Apadena Corner), Record Building, Tehran, Tehran, 15577, Iran. The latter address is referred to hereafter as "the Tehran Address".

 

2. The Domain Names and Registrar

The domain names in issue are "microsoftnetwork.com," "hotmaill.com," "homail.com," "hotmai.com," "otmail.com," "hotmailcom.com," "activexx.com" and "linksexchange.com." ("the Domain Names"), the Registrar of each of which is Network Solutions, Inc. ("NSI").

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received on June 6, 2000, an e-mail and on June 7, 2000, a hard copy of the Complaint and accompanying documents. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Complainant made the required payment to the Center. On June 15, 2000, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On June 7, 2000, the Center transmitted via e-mail to NSI a request for registrar verification in connection with this case. On June 10, 2000, NSI transmitted via e-mail to the Center NSIís Verification Response.

The Centerís notification of June 15, 2000, was sent by post/courier, by facsimile and by e-mail to each of the names, postal addresses, facsimile numbers and e-mail addresses that appear on the "WhoIs" database of each of the Domain Names (see below for further details). No response was received from any addressee. On July 12, 2000, Notification of Respondent Default was sent by the Center by post/courier to

(a) the four business names apparently operating from the Tehran Address; and

(b) Danny Khoshnood, c/o Global Net 2000, 21551 Burbank Blvd., 101 Woodland Hills, CA 91367, USA.

In addition that Notification was sent by e-mail to Siavashbehain@yahoo.com.

On July 18, 2000, the Center notified the parties of the appointment of the Administrative Panel and that it is required to forward its decision to the Center by July 31, 2000.

The language of these proceedings is English.

 

4. Factual Background

(a) The Trademarks

The Complaint is based on the Complainantís trademarks MICROSOFT, MSN, ACTIVEX, LINKEXCHANGE and HOTMAIL ("the Trademarks"). Print-outs from the U.S. Patent & Trademark Office Database are exhibited, as follows:-

Trade Mark

Trade Mark No.

Registrant

MICROSOFT

2285870

Microsoft Corporation

MICROSOFT

1259874

Microsoft Corporation

MICROSOFT

1256083

Microsoft Corporation

MICROSOFT

1200236

Microsoft Corporation

MSN THE MICROSOFT NETWORK

2014296

Microsoft Corporation

ACTIVEX

2114649

Microsoft Corporation

LINKEXCHANGE

2172813

Linkexchange, Inc.

HOTMAIL

2165601

HoTMail Corporation

The Complainant states that Hotmail Corporation no longer exists, having been merged into the Complainant, that Complainant has acquired LinkExchange, Inc. and that assignments of the two trademarks have been filed with the U.S. P.T.O. The Panel has no reason to doubt the truth of these statements.

(b) The Domain Names

Some discussion of the details of the individual registrations of the Domain Names is necessary, principally because the name of the registrant is not identical in each case. In particular the registrant of "microsoftnetwork.com" is given on the WhoIs print-out and in NSIís Verification as The Microsoft Network. In the case of "linksexchange.com" the registrant is apparently Global Net 2000 INTERNATIONAL. The Complainant submits that the Panel should find that the registrant of all the Domain Names is the same, namely Global Net 2000. The WhoIs database print-outs record the following:-

(i) "microsoftnetwork.com":-

Registrant:
The Microsoft Network (MICROSOFTNETWORK-DOM)
166 NORTH SOFREVARI ST.
TEHRAN, TEHRAN 15577
IRAN

Domain Name: MICROSOFTNETWORK.COM

Administrative Contact, Billing Contact:

BEHAIN, SIAVASH (DK4360) siavashbehain@YAHOO.COM
166 NORTH SOHREVARDI ST.APADANA ST.
CORNER RECORD BUILDING, TEHRAN
TEHRAN 15577
818-773-1347/9821-876-5837 (FAX) 9821-876-5505

Technical Contact, Zone Contact:

Van Dromme, Chris (CV161) chris@USINTER.NET
US Internet
P.O. Box 1070
Santa Monica, CA 90406
310-581-2811 (FAX) 310-581-2831

(ii) "linksexchange.com":-

Registrant:

Global Net 2000 (LINKSEXCHANGE-DOM)
INTERNATIONAL
166 NORTH SOFREVARI ST. (APADENA CORNER) Ė RECORD BUILDING
US ADDRESS
IRAN

Domain Name: LINKSEXCHANGE.COM

Administrative Contact, Technical Contact, Zone Contact, Billing Contact:

BEHAIN, SIAVASH (DK4360) siavashbehain@YAHOO.COM
BEHAIN ENTERPRISES GLOBAL NET 2000, INC.
166 NORTH SOHREVARDI ST.APADANA ST.
CORNER RECORD BUILDING, TEHRAN
TEHRAN 15577
IRAN

818-773-1347/9821-876-5837 (FAX) 9821-876-5505

(iii) "hotmaill.com":-

Registrant:

GLOBAL NET 2000, INC. (HOTMAILL-DOM)
INTERNATIONAL
166 NORTH SOFREVARI ST. (APADENA CORNER) Ė RECORD BUILDING
US ADDRESS
IRAN

The Administrative, Technical, Zone and Billing Contacts are precisely the same as for "linksexchange.com".

(iv) The remaining 4 mis-spellings of "hotmail" and "activexx.com" show the identical Registrant details:-

GLOBAL NET 2000, INC.

166 NORTH SOFREVARI ST.

(APADENA CORNER) Ė RECORD BUILDING
TEHRAN, TEHRAN 15577

IRAN

The Administrative, Technical, Zone and Billing Contacts are again precisely the same as for "linksexchange.com" in (ii).

Finally, NSIís Verification Response confirms the details set out in (i) for "microsoftnetwork.com". However, in relation to the other Domain Names, NSI states the following:-

"3. Network Solutions confirms that GLOBAL NET 2000, INC. is the current registrant of the HOTMAILL.COM, HOMAIL.COM, OTMAIL.COM, HOTMAILCOM.COM, ACTIVEXX.COM, LINKSEXCHANGE.COM, HOTMAI.COM domain name registrations.

Registrant:

GLOBAL NET 2000, INC. (HOTMAILL-DOM)
INTERNATIONAL
166 NORTH SOFREVARI ST. (APADENA CORNER)- RECORD BUILDING
US ADDRESS
IRAN

Domain Names: HOTMAILL.COM, HOMAIL.COM, OTMAIL.COM, HOTMAILCOM.COM, ACTIVEXX.COM, LINKSEXCHANGE.COM, HOTMAI.COM"

The Contact details set out in (ii) above are confirmed, and all the Domain Names are confirmed to be in "Active" status.

 

5. The Complaint

The grounds of the Complaint can be summarized as follows:-

(a) The Complainant submits that the contact information for the registrant of "microsoftnetwork.com" and "linksexchange.com" is sufficiently similar to the contact information for the other Domain Names that the Panel should find that the registrant of all of the Domain Names is the same (Global Net 2000) and not require the initiation of separate administrative proceedings for "microsoftnetwork.com" and "linksexchange.com." The Panel is referred to Adobe Systems Incorporated v. Domain Oz, World Intellectual Property Organization ("WIPO") Case No. D2000-0057, a decision involving similarly-named registrants, where the WIPO Administrative Panel found that where the addresses of the registrants were identical, but the names of the registrants were merely similar, the registrants were the same and the complainant would not be required to initiate separate administrative proceedings. The Complainant points out here that the registrants have identified the same address in Iran on the registration records for each of the Domain Names and accordingly, it is appropriate for the Panel to treat the registrants of the Domain Names as one and the same.

(b) The only other identifying information known to the Complainant for the registrant of the Domain Names concerns an individual named Danny Khoshnood. Mr. Khoshnood has identified himself in past communications with the Complainant as the president of Global Net 2000, Inc. and purported to have the authority to enter into a settlement agreement with the Complainant for transfer of the domain name "microsoftnetwork.com" to Microsoft. Mr. Khoshnoodís last known address is c/o Global Net 2000, 21551 Burbank Blvd., No. 101, Woodland Hills, California, U.S. 91367. Moreover, corporate records filed with the California Secretary of State identify Danny Khoshnood as an officer of Global Net 2000, Inc.

(c) The Complainant is a well-known, worldwide provider of computer software and related products and services, including products for use on the Internet, and online services and information delivered via the Internet. Since its inception in 1975, the Complainant has created software for use in the workplace, home, and education.

(d) The Complainant has spent substantial time, effort and money advertising and promoting the Trademarks throughout the United States and the world. As a result, the Microsoft Marks have become distinctive and well-known, and Microsoft has developed an enormous amount of goodwill in the marks.

(e) In connection with the Trademarks, the Complainant has established Internet websites located at domain names comprised of the Trademarks, including "microsoft.com," "microsoft.net," "msn.com," "hotmail.com" and "linkexchange.com." (collectively, the "Microsoft Websites"). The Microsoft Websites allow computer users throughout the United States and the world to access information regarding the Complainant and its products and to use and enjoy the Internet services provided by the Complainant.

(f) Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the companyís name or mark. See Panavision Intíl, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) ("A customer who is unsure about a companyís domain name will often guess that the domain name is also the companyís name." . . . "[A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base."). For example, because the Complainantís MSN trademark is an acronym for the Microsoft Network, consumers may expect to find a Microsoft website at "microsoftnetwork.com." However, because Respondent has registered "microsoftnetwork.com," those consumer expectations are now frustrated.

(g) Consumer expectations also are frustrated by the Respondentís registration of each of the other Domain Names, including "activexx.com," "hotmai.com" and "linksexchange.com," which consist of common typographical misspellings of the Trademarks. Consumers who are seeking an official Microsoft website located at a domain name comprised of one of the Trademarks, but who inadvertently make a typographical error while typing in the domain name, are diverted to one of Respondentís websites. Consumers who arrive at one of Respondentís websites by virtue of a typographical error may believe they have arrived at an official Microsoft website, or believe wrongly that Respondentís websites are endorsed, authorized or sponsored by, or affiliated with, the Complainant.

(h) The Complainant further points to the facts that the Respondent has no connection or affiliation with the Complainant, and has not received any license or consent, express or implied, to use the Trademarks in a domain name or in any other manner as evidence that the Respondent has no legitimate interest in any of the Domain Names.

(i) Finally, the Complainant relies on the following as evidence of the registration and use in bad faith of the Domain Names:-

(i) The Respondent has used each of the Domain Names to redirect Internet traffic away from an official Microsoft Website and to the website located at "webcrawlers.com," a domain name also registered to Global Net 2000. Upon typing in any of the Domain Names, the user is immediately redirected to the website located at "webcrawlers.com," which purports to offer Internet consulting services.

(ii) The Respondent has registered numerous other domain names that consist of other companiesí trademarks, including "BMWdealer.com" "Porschedealers.com" and "Pacificbelldirectory.com." These registrations clearly show, as set forth in paragraph 4(b)(ii) of the Dispute Policy, a pattern of registering domain names comprised of othersí trademarks in order to prevent the trade mark owners from using them, and consumers from finding the ownerís corresponding websites.

(iii) Finally, the Respondentís past conduct creates a strong and justified concern by the Complainant that the Respondent will further misuse the Domain Names in a manner harmful to the Complainant and internet users. Danny Khoshnood ("Khoshnood"), who purports to be the president of Respondent, was previously identified as the registrant of the domain name "microsoftnetwork.com," and linked that domain name to sites displaying pornographic material. Following a written demand from the Complainantís attorneys, in June 1997, Khoshnood entered into a written agreement to transfer the "microsoftnetwork.com" domain name to the Complainant (the "Khoshnood Agreement"). Khoshnood further agreed, on behalf of himself and all persons and businesses acting under his control or acting in concert with him, to cease and desist from using the "names or designations of Microsoft Network, MicroSoft Network, microsoftnetwork, or any confusingly similar variation thereof." The Respondent's failure to transfer "microsoftnetwork.com" to the Complainant, and continued use of all of the Domain Names violates the Khoshnood Agreement and further demonstrates the Respondentís bad faith. Also, based on the Respondentís past conduct with respect to "microsoftnetwork.com," the Complainant is concerned that, unless the Respondent is compelled to transfer the Domain Names to the Complainant, there exists a strong likelihood that the Respondent will link the domain names to websites featuring pornographic material.

 

6. The Response

As indicated above no Response has been forthcoming. The Panel is satisfied that the Center has done all that could reasonably be expected of it to notify the Respondent and any person or organization associated with it of the initiation of this proceeding (see the "WhoIs" extracts recited in paragraph 4(b) above). In addition, notification was sent to the above-named Danny Khoshnood.

 

7. Discussion

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:-

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

(a) The Respondent

As a preliminary issue, however, the Panel must first consider whether these proceedings have been properly instituted in respect of the domain names "microsoftnetwork.com" and "linksexchange.com". The Panel has no difficulty in concluding that the registrant of the latter domain name is the same Global 2000, Inc. As is apparent from the "WhoIs" data cited at paragraphs 4(b)(ii)-(iv) there is some inconsistency in the precise name and address of the registrant, but all material details are essentially the same.

However, the situation is less clear that "The Microsoft Network" (the registrant of "microsoftnetwork.com") is the same party as the Respondent "Global Net 2000, Inc.". The ICANN Rules provide that "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder" (Rules, para. 3(c)).

Clearly, there is a very close relationship between "The Microsoft Network" and the Respondent, but the Panel is unable on the evidence to conclude that there is in fact only one person. However, the Panel also considers (like the Panel in Case No. D2000-0057 referred to by the Complainant) that it would place an unjustifiable burden on the Complainant to require it to institute separate proceedings against "The Microsoft Network", in particular in light of the past history of Mr. Khoshnood reneging on the agreement to transfer the "microsoftnetwork.com" domain name to the Complainant.

In the circumstances, the Panel proposes to treat this proceeding as having been originally instituted against Global Net 2000, Inc. and The Microsoft Network. The Panel does not consider any injustice will have been done, since the Center served Notification on The Microsoft Network at the Tehran Address, on Siavash Behain (the Administrative and Billing Contacts), on Chris Van Dromme (the Technical and Zone Contacts) and on Mr. Khoshnood.

However, in any similar case in the future, the Panel considers that where several possibly different entities are clearly involved in the same overall series of activities, it is better practice to name all possibly different respondents as co-respondents in the same Administrative Proceeding, as occurred in Yahoo! Inc. v. Eitan Zviely, et al (WIPO Case No. D2000-0273).

The Panel turns now to the question of whether the Complainant has satisfied the onus placed on it by paragraph 4(a) of the ICANN policy.

(b) The Trademarks

The Panel finds for the Complainant that each of the Domain Names is confusingly similar to a trade mark or service mark in which the Complainant has rights.

In the case of "microsoftnetwork.com", the addition of the descriptive word "network" to the world-famous trade mark MICROSOFT cannot assist the Respondent. Likewise, the addition of "com" to HOTMAIL does not avoid confusion.

In the case of each of the other Domain Names a single letter of the alphabet has either been added to or deleted from one of the Trademarks as follows:-

Trade Mark

Domain Name

Difference

HOTMAIL

hotmaill

"l" added

HOTMAIL

homail

"t" deleted

HOTMAIL

hotmai

"l" deleted

HOTMAIL

otmail

"h" deleted

ACTIVEX

activexx

"x" added

LINKEXCHANGE

linksexchange

"s" added

In each case the Domain Name is confusingly similar to the relevant Trademark.

(c) No rights or legitimate interests

Paragraph 4(c) of the Policy indicates to respondents three non-limitative circumstances which demonstrate that a respondent has rights or legitimate interests.

The circumstances set out in sub-paragraph (iii) of paragraph 4(c) are in the following terms:-

"you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Respondentís use of the Domain Names is the obverse of the foregoing. It is manifestly not a "legitimate" or "fair" use and it is with intent for commercial gain to misleadingly divert consumers. The Panel has no hesitation in finding that the Respondent has no rights or legitimate interests in the Domain Names.

(d) Registration and use in bad faith

Paragraph 4(b) of the Policy sets out circumstances which constitute evidence of registration and use in bad faith. Sub-paragraph (iv) is material in these proceedings:-

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

All of the Domain Names except for "microsoftnetwork.com" are simple mis-spellings of the Complainantís trademarks. The manner (described in paragraph 5(i)(ii) above) in which, upon typing in any of the Domain Names, the user is immediately redirected to the website located at "webcrawlers.com", amounts, in the Panelís opinion, at the least to use in bad faith. Since the Domain Names were evidently registered to achieve this result, the Panel has no hesitation in concluding that the Domain Names were both registered and are being used in bad faith.

If any separate evidence of registration and use in bad faith were required so far as concerns the domain name "microsoftnetwork.com", the Panel notes the evidence of the linkage of this domain name to sites displaying pornographic material, clear evidence of such conduct, given the indisputable renown of the MICROSOFT name.

 

8. Decision

In the light of the findings in paragraph 7 above, the Panel concludes that:

· the domain name "microsoftnetwork.com" is confusingly similar to the trade mark MICROSOFT of the Complainant;

· each of the domain names "hotmaill.com", "homail.com", "hotmai.com", "otmail.com" and "hotmailcom.com" is confusingly similar to the trade mark HOTMAIL of the Complainant;

· the domain name "activexx.com" is confusingly similar to the trade mark ACTIVEX of the Complainant;

· the domain name "linksexchange.com" is confusingly similar to the trade mark LINKEXCHANGE of the Complainant;

· the Respondent has no rights or legitimate interests in any of the Domain Names; and

· the Domain Names have been registered and are being used in bad faith.

In accordance with paragraph 4(i) of the Policy, the Panelist orders that the domain names "microsoftnetwork.com," "hotmaill.com," "homail.com," "hotmai.com," "otmail.com," "hotmailcom.com," "activexx.com" and "linksexchange.com." be transferred to the Complainant, Microsoft Corporation.

 


 

Christopher Tootal
Presiding Panelist

Dated: July 25, 2000