WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Paul Horner

Case No. D2002-0029

 

1. The Parties

The Complainant is Microsoft Corporation, a corporation organized in the State of Washington, United States of America (USA), with place of business in Redmond, Washington, USA.

The Respondent is Paul Horner, with address in Laveen, Arizona, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is <microsoftsite.com>.

The registrar of the disputed domain name is Registrars.com, with business address in San Francisco, California, USA.

 

3. Procedural History

(a) The Complainant initiated the proceeding by the filing of a complaint via e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on January 14, 2002, and via courier mail received by WIPO on January 17, 2002. Complainant paid the requisite filing fees. On January 18, 2002, WIPO transmitted a Request for Registrar Verification to the registrar, Registrars.com, with the Registrarís Response received by WIPO on January 23, 2002.

(b) On January 24, 2002, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.

(c) On February 11, 2002, Respondentís response was received via e-mail by WIPO, and on February 13, 2002, Respondentís response was received in hardcopy by WIPO. Respondent also transmitted its response to Complainant.

(d) On February 15, 2002, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On February 17, 2002, the undersigned transmitted via telefax the executed Statement and Declaration to WIPO.

(e) On February 18, 2002, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by March 4, 2002. The Panel received a hard copy of the file in this matter by courier from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant is the holder of numerous trademark and service mark registrations for the term "MICROSOFT" and various "MICROSOFT"-formative marks on the Principal Register of the United States Patent and Trademark Office (USPTO), including No. 1200236, dated July 6, 1982, covering computer programs and computer programming services. "MICROSOFT" and "MICROSOFT"-formative trademarks and service marks are registered in trademark offices in countries other than the United States. (Complaint, para. 10 & Exhibit D) The "MICROSOFT" mark is well known in the United States and other countries. The rights of Complainant in the "MICROSOFT" mark have previously been determined by this sole panelist [1], and by other administrative panels making determinations under the Policy. Respondent has not contested Complainantís rights in the "MICROSOFT" mark.

Complainant maintains an active commercial website at Internet address (URL) <www.microsoft.com>. This website is visited by a substantial number of Internet users.

According to the Registrarís (Registrars.comís) verification response to WIPO, dated January 23, 2002, "Paul Horner" is the listed registrant of the disputed domain name <microsoftsite.com>. According to that verification, "Horner, Paul" is also the Administrative Contact for that name. According to a Registrars.com WHOIS database printout submitted by Complainant, the record of registration for the disputed domain name was created on April 17, 2000, (Complaint, Annex B).

The disputed domain name has been used to direct Internet users to a website at Internet address <www.microsoftsite.com>. As of September 27, 2001, that website was headed with a banner "Microsoftsite". The content on the center of the home page stated "Win Free Porn for Life", and included, inter alia, a pornographic photograph with label "The Hottest Slutty Lesbians on the Net!! Stills, Videos and more!!" The home page included a list headed "Microsoftís Favorites", with links such as "Microsoftís bitches". It also included lists for "Hot Porn" and "Other Stuff Besides Porn" (Complaint, Annex F). The content on the <www.microsoftsite.com> website changed from time to time. As of December 31, 2001, the home page included a picture of "My dog, Microsoft" and a young man labeled "Me, the owner of Microsoft", along with multiple links to pornographic websites, and a posting of a cease and desist and transfer demand from Complainantís counsel to Respondent. (Id., Annex E)

By courier mail and e-mail dated October 11, 2001, Complainant (via counsel) sent a cease and desist and transfer demand to Respondent. That demand was posted on <www.microsoftsite.com>, headed by the text "Microsoft has been viewing my site for the last year now and for some reason NOW has sent me a nasty-gram. I just want to get one thing straight here. I own Microsoft. This is Microsoftís site. This is the Official Microsoft Site." (Id., Annexes H & I)

The Service Agreement in effect between Respondent and Registrars.com subjects Respondent to Registrars.comís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant asserts that it is the holder of rights in the "MICROSOFT" trademark and service mark, that such mark is well known, and that the disputed domain name is confusingly similar to its mark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its mark. Complainant indicates that Respondent has used its mark in the disputed domain name to publicize his own website, which "offers links to various pornographic websites that are not provided by, or in any way affiliated with, Microsoft."

Complainant states that Respondent has used the disputed domain name in bad faith. It argues that Internet users will enter Respondentís Internet address believing that they will be directed to Complainantís commercial website, and may conclude that Complainant is promoting pornography. This is argued to harm Complainantís reputation. Complainant cites Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996) and Toys R Us, Inc. v. Akkaoui, 40 U.S.P.Q. 1836 (N.D. Cal. 1996) in support of its argument. Even if Internet users conclude that the website is not sponsored by or affiliated with Complainant, they will be frustrated in their efforts to reach Complainantís genuine website. Complainant asserts that "mousetrapping" at Respondentís website diverts Internet users from a link labeled for Complainantís products to a series of pornographic links.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

B. Respondent

Respondent argues, "any remotely non-retarded person will know Microsoftsite.com is not the actual Microsoft.com site and is only there to serve as one of the millions of humorous and satirical sites on the Internet Ďmaking funí of the Software Giant".

Respondent does not contest that the disputed domain name is confusingly similar to the "MICROSOFT" mark, but contends that the confusion is promptly dispelled upon reaching his home page. He states that his intention is to use the disputed domain name to direct Internet users to his website where he expresses himself through satire that is protected expression under the U.S. Constitution.

Respondent states, "I made no attempt to resolve the matter informally. Microsoft made no offer to buy the name. They requested that I hand the name over for free. I didnít want to do that. I did want to post their letter online to add to the other humorous articles and pictures on my site".

Respondent requests the Panel to reject Microsoftís request for an order to transfer the disputed domain name.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent has filed a detailed response to the complaint indicating that he received notice and was afforded an adequate opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant holds rights in the well-known trademark and service mark "MICROSOFT". This fact has been determined in prior administrative proceedings, and is not disputed by Respondent. Respondent concedes that the disputed domain name <microsoftsite.com> is confusingly similar to Complainantís mark [2], basing his defense in this proceeding on an asserted right to express himself through satire.

The Panel finds that Respondent has registered a domain name that is confusingly similar to a trademark and service mark in which Complainant has rights. For reasons of administrative economy, the Panel need not further elaborate grounds for findings in this regard. Complainant has satisfied the first element for a finding of abusive domain name registration and use under the Policy.

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) 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." (Policy, paragraph 4(c))".

It is common ground between the parties that Respondent has not satisfied the criteria of paragraph 4(c)(i) or (ii).

Respondent asserts that he is making legitimate noncommercial or fair use of the domain name because his website is used to satirize Complainantís business. The essence of his argument is that he is "making fun" of Complainant by attracting Internet users with the "MICROSOFT" mark, but instead of providing Microsoft content on his website, he exhibits pornography and provides links to pornographic websites.

In some respects, Respondentís legitimate non-commercial use defense bears resemblance to that accepted by the First Circuit Court of Appeals in L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F. 2d 26 (1st Cir. 1987), cert. denied, 483 U.S. 1013 (1987). In that case, the publisher of a pornographic magazine used a trademark without the consent of its holder to create a parody. The trademark holder typically used its mark in commerce in connection with a catalogue advertising outdoor clothing. The parody consisted of using "L.L. Beamís Back-To-School-Sex-Catalog" as a title on a two-page article portraying nude models in sexually explicit positions "using Ďproductsí that were described in a crudely humorous fashion." 811 F. 2d 27. The Court of Appeals said that the magazineís use was noncommercial, editorial and artistic, labeled as humor and parody, took up two pages of a 100 page issue, and "neither the article nor appellantís trademark was featured on the front or back cover of the magazine" (811 F. 2d at 32). The Court held that under these circumstances, the right of free expression trumped the rights of the trademark holder under a state anti-dilution statute.

By contrast, in the present proceeding Respondent is using Complainantís trademark and service mark as the principal identifier of his website. Unlike in L.L. Bean where the trademark was merely a small part of a larger enterprise, and not used to directly attract consumers to the magazine, in the present circumstances the trademark is used precisely to attract Internet users. It defines the location of Respondentís website on the Internet. In the present circumstances, Respondentís website is not labeled humor or parody.

Perhaps the critical distinguishing factor from L.L. Bean is that individuals reading through a pornographic magazine presumably know what they are doing. Those readers expect to find pornographic pictures, and in L.L. Bean the trademark holderís mark is merely a device to create interest in a particular photo-spread. By way of contrast, in this case the typical Internet user entering <www.microsoftsite.com> in their browser would not expect to find photos of "the hottest slutty lesbians on the web". The Internet user is immediately exposed to materials that he or she (including children) may find offensive, based upon Respondentís use of Complainantís mark. This is damaging to Complainantís business interests in its mark.

The issue in this proceeding is not whether Respondent is free to insult or parody Complainant on the Internet. The issue is not the cultural value of pornography. The issue is whether Respondent may use Complainantís mark in the disputed domain name as the identifier and advertising vehicle to attract Internet users to his particular forum. By using Complainantís mark in a domain name that conveys no indication that the address is directed to explicit pornographic content, he diverts Internet users to a website that may substantially offend some portion of Complainantís customers and prospective customers. Unlike in L.L. Bean, the potentially offensive content is not tied to particular products or services marketed by Complainant. Unlike in L.L. Bean, the Internet user has not intentionally chosen to view pornography.

The Panel considers that the disputed domain name is not being used for a legitimate non-commercial parody of Complainantís mark and business. The Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] website or location of a product or service on [its] website or location" (id., paragraph 4(b)(iv)).

The Panel has determined that the disputed domain name is confusingly similar to Complainantís mark. Respondent registered and has used the disputed domain name for the purpose of directing Internet users to his website by creating confusion regarding Complainantís sponsorship of or affiliation with his site. Respondent uses pornographic photos on his website to publicize links to additional websites commercially displaying pornography. Respondent is using Complainantís mark for commercial purposes. Although Respondent disclaims directly profiting from the use of Complainantís mark, the owners of the linked pornographic website are so profiting, and Complainant is effectively acting as the agent of those owners. Respondentís conduct constitutes bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Complainant has thus satisfied all three elements necessary for a finding that Respondent has engaged in abusive registration and use of the disputed domain name within the meaning of paragraph 4(a) of the Policy.

The Panel will direct the registrar to transfer the disputed domain name to Complainant.

 

7. Decision

Based on its finding that the Respondent, Paul Horner, has engaged in abusive registration and use of the domain name <microsoftsite.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <microsoftsite.com> be transferred to the Complainant, Microsoft Corporation.

 


 

Frederick M. Abbott
Sole Panelist

Dated: February 27, 2002

 


Footnotes:

1. See Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548, decided July 21, 2000.

2. For example, Respondent states, "My Microsoft.site com is satire so the fact that the domain name <microsoftsite.com> is identical or confusingly similar to the MICROSOFT mark doesn't mean anything." Response, para. 22.