WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Andrey Tumakov

Case No. D2002-1039

 

1. The Parties

The Complainant in this administrative proceeding is Microsoft Corporation, of One Microsoft Way, Redmond, Washington, United States of America.

The Complainant is represented in this proceeding by the attorneys Suzanne V. Wilson, Esq. and James S. Blackburn, Esq. of Arnold & Porter, Los Angeles, United States of America.

The Respondent (the holder of the domain name registration) is Andrey Tumakov, microesoft.com, Volzhskaya Naberezhnaya N. Novgorod, Russia, of the Russian Federation.

 

2. The Domain Name and Registrar

The disputed domain name is <microesoft.com> ("the Domain Name").

The Domain Name Registrar is Tucows Inc.(" Tucows").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 8, 2002. On November 8, 2002, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 11, 2002, Tucows 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.

On November 14, 2002, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2002. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 5, 2002.

The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 9, 2002.

The Center appointed Ron Klagsbald [the undersigned] as the sole panelist in this matter on December 12, 2002. 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 paragraph 7 of the Rules.

 

4. Factual Background

In light of Respondentís default, the facts stated in the Complaint remain uncontested. As the Respondent has failed to submit a response to the Complaint, the Panel may accept all Complainantís allegations as true (see WIPO Case No. D2002-0912 Sammy's Management Company v. Keith Wimbley, referring to: WIPO Case No. D2000-0009 Talk City, Inc. v. Michael Robertson). The facts included in the Complaint are, therefore, accepted as true:

"7. Microsoft is a well-known, worldwide provider of computer software and related products and services, including products and services designed for use through the Internet. Since its inception in 1975, Microsoft has created software and Internet services for use in the workplace, home, and education.

8. Microsoftís 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, online information and entertainment services, electronic commerce services, and computer publications.

9. Microsoftís many products and services include various "photo-imaging" products. Microsoft Picture-It!® is among Microsoftís many photo-imaging products. Microsoft Picture-It!® provides a complete set of photo editing tools that allow computer users to edit, matte and frame photos, add clip art to their images, and share photos with other computer users. Microsoft also offers Microsoft Design Gallery Live, available as part of Microsoft Office Home Edition, which provides clip art and letter templates for computer users. In addition, Microsoft offers digital photography services as part of Windows® XP Home Edition, which allow users of that software to, among other things, create their own photo albums and photo slideshows, and to share photos with other persons by electronic mail and over the Internet. Furthermore, Microsoft TV Photo Viewer allows users to create digital photo albums that can then be displayed on a regular television.

10. Microsoft offers these goods and services to the public under the federally registered trademark "MICROSOFT" (the "MICROSOFT Mark"). The United States Patent and Trademark Office has granted federal trademark registrations for the MICROSOFT Mark in numerous classes of goods and services, including, without limitation: computer programs, computer hardware, information services in the fields of entertainment, movies and sports, interactive electronic retailing and on-line ordering and information systems, restaurant and travel information and reservations, electronic mail services, and books and reference materials. True and correct copies of certain of Microsoftís trademark registrations for the MICROSOFT Mark are attached [to the Complaint] collectively as Exhibit D.

11. Microsoft has spent substantial time, effort and money advertising and promoting the MICROSOFT Mark throughout the world. As a result, the MICROSOFT Mark has become distinctive and well-known, and Microsoft has developed an enormous amount of goodwill in the mark. Indeed, previous World Intellectual Property Organization ("WIPO") administrative panels have determined on many occasions that the MICROSOFT Mark is famous [the Complainant lists previous relevant WIPO decisions].

12. In connection with the MICROSOFT Mark, Microsoft has established Internet websites located at domain names comprised of the MICROSOFT Mark, including <microsoft.com> and <microsoft.net> (collectively, the "Microsoft Websites"). The Microsoft Websites allow computer users throughout the world to access information regarding Microsoft and its products and services and to use and enjoy the Internet services provided by Microsoft. In addition, the "microsoft.com" home page includes links to websites where Microsoft products, including Microsoftís photo-imaging products, can be purchased. A true and correct copy of a printout of the "microsoft.com" home page dated October 18, 2002, is attached [to the Complaint] as Exhibit E. A true and correct copy of a printout of the Microsoft webpage listing Microsoftís photo-imaging products, dated October 18, 2002, is attached [to the Complaint] as Exhibit F.

13. Microsoft recently discovered that Respondent had registered the <microesoft.com> domain name and established a commercial website at the <microesoft.com> domain name that appeared to offer software products and services under the company name "Microesoft Corporation." A true and correct copy of a printout of the home page for "microesoft.com" dated June 28, 2002, is attached [to the Complaint] as Exhibit G. "Microesoft Gallery Maker," a product which, according to the description on the "microesoft.com" website, allowed users to "create, view, and edit photo albums, Internets, thumbnails, virtual picture galleries, catalogues, presentations, and slideshows" was one of the software products and services offered at the <microesoft.com> domain name. The product description on Respondentís "microesoft.com" website also claimed that the "Microesoft Gallery Maker" allowed users to "edit . . . digital photos with a host of tools, . . . organize (the userís) album, and share albums on the web." In addition, "Microesoft Gallery Maker" purportedly allowed users to add free clip art to their photo projects. A true and correct copy of the printout of the product description for "Microesoft Gallery Maker" dated June 28, 2002, is attached [to the Complaint] as Exhibit H.

14. Following its discovery of Respondentís wrongful conduct, Microsoftís counsel sent a cease and desist letter to Respondent via both electronic mail and Federal Express, explaining that Respondentís use of the "Microesoft" name infringes and dilutes Microsoftís trademark rights in the MICROSOFT Mark. The letter further demanded that Respondent ceases his illegal conduct by, among other things, changing the name of his company, products, and services to avoid any confusion with the MICROSOFT Mark. In addition, Microsoft counsel demanded that Respondent transfer the registration for the <microesoft.com> domain name to Microsoft. A true and correct copy of the letter sent by Microsoftís counsel to Respondent, dated July 8, 2002, is attached [to the Complaint] as Exhibit I.

15. Respondent answered Microsoftís demands by changing the publicly accessible portion of his website to display only a webpage stating that the site was "for construction." However, although Respondent closed the "microesoft.com" website "for construction," he did not disable background download functionality from the "microesoft.com" site. Thus, "Microesoft Gallery Maker" remained available for download from numerous Internet companies with links to Microesoft.com. "downlinx.com" was among the many sites offering "Microesoft Gallery Maker" for download in this manner. True and correct copies of screen shots taken on October 17, 2002, showing the link from "downlinx.com" to "microesoft.com" for purposes of downloading "Microesoft Gallery Maker" are attached [to the Complaint] as exhibit J.

16. Upon discovering that "Microesoft Gallery Maker" remained available for download despite the fact that Respondent's website was "under construction," Microsoft contacted many of the companies offering Respondentís "Microesoft Gallery Maker" for download by letter and requested that the hosting websites cease offering the "Microesoft Gallery Maker" product for download. [Microsoftís counsel has contacted numerous Internet websites with links to "microesoft.com" which allowed users to download Respondentís "Microesoft Gallery Maker" program. Most of these sites have removed the links to Respondentís "microesoft.com" home page. Accordingly, the number of sites offering Respondentís "Microesoft Gallery Maker" program for download has decreased significantly.] Despite these efforts, "Microesoft Gallery Maker" remained readily available for download. A simple Internet search for "Microesoft" yields 240 matches. A true and correct copy of the Google search dated November 4, 2002, displaying the list of websites from which "Microesoft Gallery Maker" remains available is attached [to the Complaint] as Exhibit K. A true and correct copy of a sample letter sent to the websites offering Respondentís "Microesoft Gallery Maker" program for download is attached [to the Complaint] as Exhibit L. True and correct copies of a selection of webpages where users may download Respondentís "Microesoft Gallery Maker" program is attached [to the Complaint] as Exhibit M.

17. Although Respondent changed the "micreosoft.com" website to state that it was "for construction," Respondent took no further action in response to Microsoftís cease and desist letter. As stated above, despite Respondent's alteration of the visible portion of the "microesoft.com" website to state that it was "for construction," the "Microesoft Gallery Maker" software product remained available for download by link to the "microesoft.com" website. Accordingly, on October 15, 2002, Microsoftís counsel contacted SBBSNet, the apparent web host for Respondentís "microesoft.com" website. Microsoftís counsel requested that SBBSNet deactivate the website based on Respondentís violation of Microsoftís trademark rights. A true and correct copy of Microsoft's counsel's October 15, 2002, letter to SBBSNet is attached [to the Complaint] as Exhibit N. SBBSNet responded by stating that it was not the direct host for the "microesoft.com" website, having leased the IP address associated with the <microesoft.com> domain name to another hosting company, Mastek. SBBSNet nonetheless offered to work with Microsoft to resolve the issue. In furtherance of this offer, SBBSNet contacted Mastek and advised Mastek that it had three days to ensure that Respondent disabled the "microesoft.com" website before SBBSNet took steps to deactivate the site. On or about October 19, 2002, the "microesoft.com" website was deactivated and can no longer be reached by typing "microesoft.com" into a user's Internet browser."

 

5. Partiesí Contentions

A. Complainant

Complainant, Microsoft Corporation, contends the following arguments. The factual elements of these contentions are accepted as true, in view of Respondentís default to file a response.

1. Respondentís <microesoft.com> domain name is almost identical, and therefore confusingly similar, to the famous MICROSOFT Mark. The two domain names are largely indistinguishable, both phonetically and visually. The only difference between the domain names is the extra "e" in Respondentís domain name (paragraph 18 of the Complaint).

2. Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the companyís name, trademark or product.

It is clear that Respondent has attempted to take advantage, for its own commercial advantage, of this type of Internet user behavior pattern. While some Internet users will correctly locate the Microsoft Website at <microsoft.com>, other users undoubtedly will inadvertently type <microesoft.com> in their browsers and will mistakenly arrive at Respondentís website and be either frustrated at not reaching the official Microsoft website or actually be confused as to the connection between Respondentís website and its services and Microsoft (paragraphs 19 and 20 of the Complaint).

3. Respondent has no connection or affiliation with Microsoft and has not received any license or consent, express or implied, to use the MICROSOFT Mark in a domain name or in any other manner. Respondent is not an authorized dealer or reseller of Microsoft products or services. Furthermore, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Respondent has used the domain name <microesoft.com> to divert Internet users who misspell or make a typographical error when attempting to reach an official Microsoft website to his own Internet website where he offers for sale software products and services that compete with those offered by Microsoft (paragraph 21 of the Complaint).

4. When Respondent registered the Domain Name, in August 2001, The MICROSOFT Mark was already internationally famous. Therefore, it is inconceivable that Respondent was not aware of the MICROSOFT Mark when he registered the Domain Name (paragraph 22 of the Complaint).

5. Even if Respondent had denied knowledge of The MICROSOFT Mark, it would have been irrelevant. Respondent is deemed to have constructive notice of Microsoftís trademark rights in the MICROSOFT Mark by virtue of Microsoftís federal trademark registrations for the mark (paragraph 23 of the Complaint).

6. In the unlikely event that Respondent genuinely did not know about Microsoftís rights in the MICROSOFT mark and the Microsoft Website when Respondent registered the domain name <microesoft.com>, Respondentís failure to correct the situation immediately after Microsoft first advised him of Microsoftís rights satisfies the bad faith registration requirement (paragraph 24 of the Complaint).

7. Respondentís actions fall within paragraph 4(b)(iv) of the Dispute Policy in that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Microsoftís mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product or service on its website (paragraph 25 of the Complaint).

8. Respondent used the domain name <microesoft.com> to divert Internet traffic away from Microsoft to his own website at <www.microesoft.com>. Respondent undoubtedly engaged in this activity in order to benefit from the enormous level of Internet traffic from Internet users seeking the official Microsoft website, <microsoft.com>. Such conduct alone creates a prima facie inference of bad faith (paragraph 26 of the Complaint).

9. The level of consumer confusion created by Respondentís use of the infringing mark is especially high because of the similarity between the goods and services legitimately offered on Complainantís website <microsoft.com>" and those available on Respondentís website (paragraph 27 of the Complaint).

10. Alternatively, even if Internet users eventually realize that they have not arrived at an official Microsoft site, to the extent they were seeking products and services available through Respondentís website, they may decide to patronize Respondentís website instead of continuing their search for an official Microsoft website. Even if consumer confusion is dispelled prior to purchase of services and/or products offered through Respondentís website, Microsoft is harmed by the initial interest confusion created by Respondent (paragraph 28 of the Complaint).

B. Respondent

The Respondent did not file a response and did not reply to the Complainantís contentions.

Consequently, all Complainantís contentions and arguments, as stated above, are uncontested, indisputable and, therefore, accepted as true.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, according to paragraph 4(i) of the Policy, a complainant must prove the following three elements:

(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 has been registered and is being used in bad faith.

The Panel will discuss these elements one by one:

A. Respondentís Domain Name is identical or confusingly similar to Complainantís Mark

(i) Complainant has rights in the MICROSOFT Mark. This mark is federally registered in the USA in the US Patent and Trademark Office covering numerous classes of different products and services. The Complainant is the owner of these trademark registrations [Exhibit D of the Complaint].

(ii) The MICROSOFT Mark is a well-known mark. Complainant has spent substantial time, effort and money advertising and promoting the MICROSOFT Mark throughout the world. As a result, the MICROSOFT Mark has become distinctive and well-known, and Microsoft has developed an enormous amount of goodwill in the mark. Previous WIPO administrative panels have asserted that MICROSOFT is a well-known mark [see, for example: WIPO Case No. D2001-1454 Microsoft Corp. v. Momm Amed Ia; WIPO Case No. D2000-1500 Microsoft Corporation v. StepWeb].

(iii) Respondentís Domain Name <microesoft.com>, is almost identical Ė visually as well as phonetically- to Complainantís well-known mark MICROSOFT. In fact, the Domain Name is phonetically identical to Complainantís mark. The only difference between the Domain Name and Complainantís mark is the addition of the letter e between the letters O and S in Complainantís mark. As previously held by other WIPO panels, a mere addition of a minor misspelling or typographical error of a mark, does not create a new or different mark in which Respondent has legitimate rights. This is the case, in particular, where Complainantís mark is well-known and famous, like in this case [see: WIPO Case No. D2000-1495 America Online Inc. v. John Zuccarini; WIPO Case No. D2001-0362 Microsoft Corporation v. Charlie Brown].

B. Respondent has no Rights or Legitimate Interests in respect of the Domain Name

(i) 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 or in any other manner. Respondent is not an authorized dealer or reseller of Microsoft products or services. Moreover, Respondent has used the Domain Name to divert Internet users who misspell or make a typographical error when attempting to reach an official Microsoft website to his own Internet website where he offers for sale software products and services that compete with those offered by Complainant. Such behavior by Respondent does not constitute a bona fide offering of goods or services under the Domain Name (see WIPO Case No. D2001-0357 Pier 1 Imports, Inc. and Pier 1 Licensing, Inc. v. Raymond E. Farr, Jr.).

C. Respondent has Registered and Used the Domain Name in Bad Faith

(i) In August 2001, when Respondent registered the domain name <microesoft.com>, the MICROSOFT Mark was already internationally famous. As stated in the Complaint [paragraph 11], "Microsoft has spent substantial time, effort and money advertising and promoting the MICROSOFT Mark throughout the world. As a result, the MICROSOFT Mark has become distinctive and well-known, and Microsoft has developed an enormous amount of goodwill in the mark" (See also: WIPO Case No. D2000-1500 Microsoft Corporation v. StepWeb).

This Panel finds that it is extremely unreasonable that Respondent was not aware of the MICROSOFT Mark when he registered the Domain Name. The striking resemblance (almost identity) of the Domain Name to the MICROSOFT Mark only strengthens this conclusion. Respondentís choice of the Domain Name (being almost identical to the MICROSOFT Mark) cannot be considered as mere coincidence or chance.

Moreover, Respondentís use of the <microesoft.com> domain to offer for sale software products and services that are similar to those offered by Complainant strongly suggests knowledge of the MICROSOFT Mark and its fame in connection with, inter alia, software products and services.

(ii) The Panel accepts Complainantís contention that Respondent is deemed to have constructive notice of Microsoftís trademark rights in the MICROSOFT Mark by virtue of its federal trademark registrations for this mark. Trademark "registrations constitute constructive notice to all other parties of the Complainantís ownership of the mark". Therefore, even if Respondent had denied (but, he does not) knowledge of the trademark, it would have been irrelevant (see for example, WIPO Case No. D2000-1344 Microsoft Corporation v. Cupcake Patrol).

(iii) This Panel also accepts Complainantís additional contention that even in the case that Respondent genuinely did not know about Microsoftís rights in the MICROSOFT Mark and the Microsoft Website when he registered the domain name <microesoft.com>, Respondentís failure to correct the situation immediately after Microsoft first advised Respondent of Microsoftís rights satisfies the bad faith registration requirement.

(iv) This Panel concludes that Respondentís registration of the domain name <microesoft.com> despite his obvious knowledge of the famous MICROSOFT Mark amounts to registration of the Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy (see: WIPO Case No. D2000-1274 Microsoft Corporation v. Stoneybrook).

(v) Respondent used the domain name <microesoft.com> to divert Internet traffic away from Microsoft to his own website at <www.microesoft.com>. It is most probable that Respondent engaged in this activity in order to benefit from the enormous level of Internet traffic from Internet users seeking the official Microsoft website, <microsoft.com>. Such "conduct alone creates a prima facie inference of bad faith." (see: WIPO Case No. D2001-0362 Microsoft Corporation v. Charlie Brown; WIPO Case No. D2001-0060 Google, Inc. v. Namerental.com and Leonard Bensonoff).

(vi) The level of consumer confusion created by Respondentís use of the Domain Name is extremely high also because of the proximity of the goods and services legitimately offered on Complainantís website <microsoft.com> to those available on Respondentís website.

(vii) This Panel accepts Complainantís alternative argument that, even if Internet users eventually realize that they have not arrived at Complainantís site, to the extent they were seeking products and services available through Respondentís website, they may decide to patronize Respondentís website instead of continuing their search for an official Microsoft website. Even if consumer confusion is dispelled prior to purchase of services and/or products offered through Respondentís website, Microsoft is harmed by the initial interest confusion created by Respondent.

(viii) Respondentís actions as set forth hereinabove fall within paragraph 4(b)(iv) of the Policy, hence constituting evidence of use of the Domain Name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Microsoftís mark as to the source, sponsorship, affiliation, or endorsement of his website or location of a product or service on his website.

(ix) This Panel concludes that Respondentís use of the <microesoft.com> domain name as set forth hereinabove constitutes use of the Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy.

Conclusion

In light of the Panelís findings as set forth hereinabove, the Panel finds that the Complainant has proven the cumulative elements which, according to paragraph 4(a) of the Policy, justify an order for the transfer of the Domain Name as prescribed in paragraph 4(i) of the Policy: (i) the domain name <microesoft.com> is almost identical and confusingly similar to the MICROSOFT Mark in which Complainant has legitimate rights; and (ii) Respondent, who is the current registrant of the Domain Name, has no right or legitimate interest in or with respect to this domain name; and (iii) Respondent has registered and used the 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 <microesoft.com> be transferred to the Complainant, Microsoft Corporation.

 


 

Ron Klagsbald
Sole Panelist

Date: 19 December 2002