WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Bio Corp., a/k/a J. Stowell
Case No. D2000-1345
1.1 The Complainant is Microsoft Corporation, a corporation organized and existing under the laws of the State of Washington, United States of America, having its principal place of business at One Microsoft Way, Redmond, Washington, United States of America.
1.2 The Respondent is Bio Corp., an entity giving a fictitious address in the United Kingdom, and J Stowell, an individual claiming to be the "owner" of the domain name at issue, giving an address at 709 S. 3rd Street, Apartment 920, Louisville, Kentucky, United States of America.
2. Domain Name and Registrar
The domain name at issue is <mechcommander2.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 6, 2000, and the signed original together with four copies forwarded by express courier was received on October 9, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated October 11, 2000.
3.2 On October 13, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On October 17, 2000, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 On October 13, 2000, The WIPO Center sent Complainant a Deficiency Notification requesting that the Complainant amend the Complaint to show that a copy of the Complaint had been transmitted to the registrar. On October 17, 2000 Complainant amended its Complaint.
3.5 Thereafter, the Complainant amended its Complaint a second and third time.
3.6 The WIPO Center determined that the Complaint as amended satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.7 On October 26, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of November 14, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.8 On November 15, 2000, not having received a formal response, the WIPO Center sent the Respondent a notification that it would be appointing the Panel pursuant to the number of panelists designated by the Complainant. The communication noted and attached a communication from the Respondent dated October 6, 2000, the date on which the Complaint was filed in electronic form. The comments from Respondent are in the nature of a denial, but they lack the certification required by The Rules for Uniform Domain Name Dispute Resolution Policy, Rule 5(b)(viii).
3.9 On November 27, 2000, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was December 10, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 In January 1999, Complainant acquired the rights in and to the trademark MECHCOMMANDER. Complainant's predecessor had filed an application for registration with the United States Patent Office ("USPTO") on November 14, 1996, claiming a first use date of December 31, 1989. A notice of allowance was mailed on November 23, 1999. An amendment to use was filed on May 23, 2000. The application is currently pending and registration has not issued. There is no indication in the prosecution history of any opposition to registration.
4.2 Complainant and its predecessor have used the MECHCOMMANDER mark in connection with computer games and have invested significant amounts of time and money in promoting the mark in the United States and around the world.
4.3 Respondent registered the domain name at issue on May 27, 1999.
4.4 Respondent uses the domain name at issue to resolve to a web site identified as The Cobra League upon which computer games are played, which league is operated by one "Ryan Spooner." In the past Respondent's web site has displayed the MechCommander trademark logo. Respondent has run prominent commercial banner advertisements on the site.
4.5 By email dated March 6, 2000, Respondent's representative, Ryan Spooner, indicated that he had been authorized to negotiate a sale of the domain name at issue and asked for a price "SUBSTANTIALLY higher than the present offering (other domain names have fetched hundreds of thousands of dollars)." Complaint, Annex G.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has failed to submit a certified response to these allegations.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
6.4 Application for registration of the mark coupled with established use of the mark gives a Complainant rights in such mark. 3636275 Canada, dba eResolution v. eResolution.com, ICANN Case No. D2000-0110; Document Technologies, Inc. v. International Electronic Communications Inc., ICANN Case No. D2000-0270.
6.5 The addition or omission of a letter or a number to a trademark in the Second Level Domain name (SLD) does not prevent the domain name from being confusingly similar to the trademark. Hitachi, Ltd. v. Fortune Int. Develop. Ent. Co. Lim., ICANN Case No. D2000-0412. Wagg, Inc. v. 1070903 Ontario Limited, ICANN Case No. AF-0205.
6.6 The Panel finds that Complainant has alleged that Respondent has no right or legitimate interest in respect of the domain name at issue. This shifts the burden to Respondent to show that it has rights or legitimate interests in respect of the domain name at issue. See, e.g., Policy, Paragraph 4(c).
6.7 Respondent has failed to produce evidence sufficient to rebut Complainant's allegations. This entitles the Panel to conclude that Respondent has no such rights or legitimate interests in respect of the domain name at issue. Ronson plc v. Unimetal Sanayai ve Tic.A.S., Retail Florist's Business, ICANN Case No. D2000-0011; Parfums Christian Dior v. QTR Corporation, ICANN Case No. D2000-0023.
6.8 It is undisputed that Respondent offered to sell the domain name at issue for a price "SUBSTANTIALLY higher" than the documented out-of pocket costs directly related to the domain name" (Policy, Paragraph 4(b)(i)), suggesting that an appropriate price would be in the hundreds of thousands of dollars. Complaint, Annex G. This is prima facie evidence of bad faith registration and use under the policy. World Wrestling Federation v. Bosman, ICANN Case No. D99-0001; CBS Broadcasting, Inc. v. Gaddoor Saidi, ICANN Case No. D2000-0243.
6.9 Moreover, the furnishing of fictitious and misleading contact information is further evidence of bad faith. Home Director, Inc. v. HomeDirector, ICANN Case No. D2000-0111; 3636275 Canada, dba eResolution v. eResolution.com, ICANN Case No. D2000-0110.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <mechcommander2.com> be transferred to the Complainant.
M. Scott Donahey
Dated: December 6, 2000