WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Avi Goldman

Case No. D2003-0044

 

1. The Parties

The Complainant is Microsoft Corporation, Redmond, Washington, United States of America.

The Respondent is Avi Goldman, Santo Domingo, Dominican Republic.

 

2. The Domain Name and Registrar

The disputed domain name <windowscasino.com> is registered with CORE Internet Council of Registrars.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 22, 2003. On January 23, 2003, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the domain name at issue. On January 31, 2003, CORE Internet Council of Registrars 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 7, 2003. The Center verified that the Complaint together with the amendment to 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced February 7, 2003. On February 14, 2003, the Complainant filed a second amendment to the Complaint. On February 19, 2003, the Respondent requested an extension to file its Response. The Response was filed with the Center, March 7, 2003. The Complainant subsequently filed a reply to which the Respondent objected, but asked alternatively to deliver a counter-reply. The Administrative Panel decided to receive the Complainantís reply and provided an opportunity to the Respondent to comment. He did so.

The Center appointed Edward C. Chiasson Q.C., Dan Hunter and G. Gervaise Davis III as panelists in this matter on March 31, 2003. The Panel finds that it was properly constituted. Each member of 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.

The Administrative Panel decided to consider all of the material delivered by the parties. An examination of the material confirms that all technical requirements for the prosecution of this proceeding were met.

 

4. Factual Background

The following information derives from the Complaint and the two amendments to the Complaint.

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

The Complainantís 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.

The Complainant offers many of these goods and services to the public under the federally registered WINDOWS Mark, including its line of operating systems, which is sold under the name "Windows". Several operating systems have been developed and sold under the Windows name including Windows 95, Windows 98, Windows 2000, and Windows XP. To brand and promote its Windows computer operating systems and related goods and services, the Complainant owns and uses approximately 47 federal trademark registrations and pending applications in the United States that consist of or include the WINDOWS marks, including the following registrations:

Mark

Class

Registration No.

Registration Date

WINDOWS

9

1,872,264

January 10, 1995

WINDOWS

16

2.005,901

October 8, 1996

WINDOWS

41

2,463,526

June 26, 2001

WINDOWS

42

2,463,510

June 26, 2001

WINDOWS

35

2,463,509

June 26, 2001

In addition to its United States trademark registrations for the WINDOWS Mark, Microsoft also has obtained trademark registrations for this mark in over 100 countries throughout the world including the following:

Mark

Counry

Registration No.

Registration Date

WINDOWS

Costa Rica

95,686

August 7, 1996

WINDOWS

Israel

83,964

April 1, 1995

WINDOWS

Switz.

431,605

March 22, 1995

The Complainant has invested significant time, effort and money advertising and promoting the WINDOWS mark throughout the United States and the world. As a result, the WINDOWS mark is well known worldwide in connection with computer operating systems and computer-related products.

The Complainant has developed goodwill in the mark. For example, Windows and Windows-related products have generated over $37 billion in sales since first introduced and it is estimated that there are over 384 million users of Windows and Windows-related products throughout the world. In addition, owing to the success of the original Windows operating system, the Complainant has developed an entire series of Windows operating systems and related products and maintains websites, accessible through the "windows.com" domain name, where an Internet user can obtain more information about Windows products.

In addition to operating systems, the Complainant also develops and sells numerous other types of software applications, including computer games. One of the computer games published by the Complainant is Microsoft Casino. This game allows users to play several popular casino games in "virtual versions" of famous Las Vegas casinos, including The Mirage ® and The Bellagio ®. Internet users may access information about Microsoft Casino and obtain free trial downloads through the Complainantís official website located at "www.microsoft.com/games."

As part of its ongoing trademark enforcement program, the Complainant discovered that the Respondent registered the subject domain name and is using it in connection with a commercial website to promote, among other things, software for consumers and online casino operators entitled "Windows Casino". Specifically, the Respondent has branded his own software under the name "Windows Casino" and has distributed it over the Internet.

The homepage of the website to which the subject domain name resolves, "Windows Casino", displays a hyperlink offering "Get 20% Bonus and Free Software DOWNLOAD GAMES." By clicking on this hyperlink, an installation sequence is initiated, causing a "pop-up" box entitled "Windows Casino Download" to open. This pop-up box advises "It is recommended that you exit all other Windows programs before continuing." The title of the default directory where the installed software will be located on the userís computer is "C://Windows Casino."

The Windows Casino homepage also contains a hyperlink entitled "Webmasters Make $$$ in our Affiliate Program." By clicking on this hyperlink, another hyperlink to the "Terms and Conditions" of the affiliate program is revealed. Paragraph 2.6 of these terms and conditions is entitled "License to Use Marks." This provision states, in part, "We hereby grant you a non-exclusive, non-transferable license, during the term of this Agreement, to use Windows Casino intellectual-property marks (licensed, in turn by us, from their owner)Ö."

It appears from the website to which the subject domain name resolves that the "Windows Casino" software was designed to and only may be played on computers running Microsoft Windows operating systems. The "Frequently Asked Questions" webpage of the website, states: "You need a PC running Windows 3.1, Windows 95, Windows 98, or Windows 2000 to run Windows Casino".

The "About Us" page of the website to which the subject domain name resolves claims that its "award winning software now powers close to 100 online casinos." This webpage also contains a hyperlink entitled "Click here to get $1000 DOWNLOAD GAMES." Located directly above this hyperlink is the statement: "We encourage you to test drive our breathtaking software by downloading your copy now".

Once a user enters the webpage to which the subject domain resolves, the user is "mousetrapped" within the site. In other words, the website generates a "pop-up" box for another casino website, making it difficult for the user to exit the site.

Following its discovery of the Respondentís registration and use of the subject domain name, the Complainantís attorney sent a letter to the Respondent via DHL express mail and e-mail on August 27, 2002, notifying the Respondent that his use of the "Windows Casino" mark infringed on the Complainantís rights and requesting that the Respondent discontinue using the name "Windows Casino".

The letter was sent to the Respondent at the address that appeared in the Whois record for the subject domain name at that time. The same postal code that appeared in connection with the Respondentís address in Israel appears in his current Whois address listing in California or Costa Rica. This postal code corresponds to the zip code for Bakersfield, California.

Also on August 26, 2002, a para-legal in the Complainantís attorneyís office attempted to reach the Respondent by telephone at the telephone number listed in the Whois record for the technical, administrative and zone contact for the subject domain name. She was connected to an automated message from the telephone company that stated the number dialed "was not a working number".

The telephone number also currently appears in the Whois record for the subject domain name and the area code and prefix correspond to Grand Prairie, Texas.

After the Respondent failed to respond to the August 26 letter the attorney again attempted to contact the Respondent by DHL express mail and e-mail on September 11, 2002.

In addition, on September 12, 2002, the attorney sent an e-mail to the "Pit Boss" of Windows Casino, requesting the name of an appropriate contact or address that could be used to follow-up on his August 26, 2002 letter. In response, a person named Monique replied to the e-mail message and instructed him to address his correspondence to support@windowscasino.com.

On October 3, 2002, DHL advised the attorney that the letter could not be delivered because the address did not exist and the Respondent could not be located.

On October 7, 2002, the para-legal sent a copy of the August 26, 2002 letter by e-mail to "support@windowscasino.com.

Having received no response to the e-mail message the para-legal re-sent her October 7, 2002 e-mail to the address on October 21, 2002.

On or about October 21, 2002, the contact information for Respondent in the Whois record changed to its current listing at "Park Commercial San JoseÖ." The following day, the Complainantís counsel sent another copy of the August 26 letter to the Respondent at the San Jose address by United States Express Mail. A few days later the letter was returned due to an "incomplete address".

In response to Ms. Wintersí October 21, 2002 e-mail message an individual identifying himself as "Andrew Goldman" sent a reply message to the para-legal informing her that all legal correspondence should be sent to Windows Casinoís legal counsel in San Jose, Costa Rica.

The Complainantís attorney then sent a letter to the legal counsel on November 5, 2002, requesting confirmation that he represented Windows Casino and informing him that the use of the "Windows Casino" mark by his alleged client infringed on the Complainantís trademark rights. That letter also requested the use of the "Windows Casino" name be discontinued. No reply was received to the letter.

On February 10, 2003, counsel in Costa Rica, telephoned one of the Complainantís attorneys and informed her that neither he nor his firm represents or knows the Respondent or any entity called "Windows Casino." Counsel confirmed this information in an e-mail message to the attorney.

Because the Complainantís counsel were unable to locate the Respondent through the address information listed in the Whois record for the subject domain name, on December 12, 2002, counsel completed an Internic Whois Data Problem Report at the ICANN website. That report identified the incorrect and inaccurate telephone and geographic address listed for the Respondent as the registrant and as technical and administrative contact.

One of the Complainantís counsel also sent a letter to CORE on December 16, 2002, requesting its assistance in obtaining accurate contact information for the registrant of the subject domain name.

On or about February 4, 2003, FedEx returned to counsel the copy of the Complaint and Complaint transmittal cover sheet that the Complainant had sent to the Respondent at the Costa Rican address previously listed for the Respondent in the Whois database and notified counsel by letter that the Costa Rican address was incomplete and insufficient to allow for delivery.

The following information derives from the Response.

The service for which the Respondent uses the subject domain name is much different from the types of products for which the Complainant has acquired trademark rights. Windows Casino is an online casino that offers its services through a downloadable software application. Windows Casino is not in the software sales business. The Respondent does not derive any revenue from selling its software.

Window Casino generates its revenue on wagers that people place over the internet. Windows Casino also offers its casino games through the web as JAVA applications under the "Windows Casino Light" brand name.

Windows Casino has plans to open a land based casino under the brand name Windows Casino.

The Complainant is not in the casino gaming business offline or online. Windows Casino has spent millions of dollars marketing its own brand name and building its image for casino services. Windows Casino after spending millions of dollars on marketing and advertising is a well-known brand among online casino players.

The Complainant offers no similar software to Windows Casino. The Complainant's games at http://www.microsoft.com/games/ are browser-based web games that are not affiliated with the Windows mark in any way. Having a Windows operating system is not even a requirement. The games are operated under the Zone.com brand name. Among the downloadable games there are no casino games.

The service provided by Respondent is casino gaming services which are much different from the products that Complainant markets with its trademark.

The Complainant earns revenue from its advertising and not by accepting wagers. Windows Casino sells no advertising. There is no competition for revenue sources.

Further proof that Windows Casino is a gaming company and not a software developer or sales firm is provided by an examination of the operational aspects of the services provided by Windows Casino. Several screen shots are included as exhibits hereto to demonstrate that the software is merely a delivery device. The software would be absolutely useless without the continuing services provided to the user by the principal operational hub of Windows Casino.

Further proof that Windows Casino is a gaming company and not a software developer or sales firm is provided by an examination of the operational aspects of the services provided by Windows Casino. The software would be absolutely useless without the continuing services provided to the user by the principal operational hub of Windows Casino. Examples are:

- Windows Casino provides an ongoing service of linking players from around the world who can play at the same virtual table; four different players can be connected to the server in order to play poker and chat with each other; each user can interact with the others; players can chat with each other in real time; the playersí names and current balance are visible;

- Windows Casino issues regular coupons for free chips and match play bonuses; these coupons have four digit codes which the user can enter on the website to take advantage of the promotions; the coupon code is transmitted to a central server and the free bonus is allocated to the playerís account;

- new accounts are created using a sign-up form, which is transmitted to Windows Casinoís central server; the sign-up form is not on the web, but inside the program - the program serves the functions of a web browser; the player has access to the games after the registration is complete;

- the system includes a financial history page on which the user can view an account statement; the software communicates with the server and the database; it retrieves the data which are transmitted over the internet; the type and time of transactions initiated are displayed; the function is very similar to the function of online banking software; the software is useless without the data that come from the database; the financial transactions do not reside on the users computer;

- players can initiate withdrawals through the software-based net interface; the software acts as a communication device between the casino and the player; a player can request money; delivery prices are displayed; these can be modified by the administrator;

- the cashier page provides the interface for players to deposit money into their casino accounts; players can purchase casino chips for cash; the information is entered on and in the software and transmitted securely via the internet; players also can redeem coupons, withdraw money and refer friends to Windows Casino.

None of these functions would operate without an internet connection and the ongoing services of the operational hub of Windows Casino.

Windows Casino is a unique brand name in gaming and is designed not only for users of the Complainantís operating system. Windows Casino is available for Mac, Linux and WebTV users as well. If the site were accessed through a Macintosh or Linux operated computer the following page would appear automatically: http://www.windowscasino.com/nonwin.html. Windows Casino Light is Windows Casino's site for Macintosh and Linux users.

The Respondentís business services have been developed and made available to operate with many different types of software platforms and software delivery mechanisms including Windows, Macintosh, Linux and Web TV through a Java, browser based Windows Casino Light brand name.

The software that a customer may download and use to access the Respondentís services is useless without a link to the ongoing services of the Respondent and without an internet connection. The Respondent has never received revenue from the sale of his software. The software is an internet delivery device for the services much like an internet browser.

Windows Casino is promoted through an affiliate network. Any affiliate is allowed to promote the Windows Casino service through his or her website. The Windows Casino software can be taken by hyperlink to the downloadable casino application from a website. The term "Powered by Windows Casino" means that the people who visit these websites download the Windows Casino program.

The Respondent has engaged in substantial marketing and promotion in order to create a distinctive brand for the phrase "Windows Casino" for a distinctive service that does not compete with the Complainantís marketing of its distinctive products.

Windows Casino is considered a leading online casino in the online gaming world with more than 1500 online casinos. The Windows Casino domain name has been used in commerce since July 2000. Over $10 million has been spent in marketing and building the Windows Casino brand name. There are over 6000 marketing affiliates around the world promoting this brand name. There are over 2 million people who have downloaded the program and it has over 30,000 players.

The Complainant alleges that the motivation for the choice of the name Windows Casino was to create confusion that would redirect the Complainantís customers (or prospective customers) to the Respondentís site. The reasons for the choice of the name Windows Casino were much different than the Complainantís imputed motivation. They include:

- a principal design characteristic and motif of the Respondentís virtual casino is the abundance and prominence of windows; the casino is named after the 49 window panes that are located prominently in the virtual casino's lobby;

- the abundance of windows creates the psychological feeling of openness and freedom which is attractive to prospective customers;

- the name Windows Casino contains the word WIN, which has a strong psychological effect on casino players; Casinos often use the word "WIN" in their name to create a psychological attraction in the minds of potential customers; examples are E.g. Winward Casino, Winter Casino, Winner's Casino. It is also a tradition of casinos to use the plural form of a noun. E.g. The Sands, Palms, Grand Banks Casino, Kings Casino, Crystal Sands Casino, Celebrities Casino, Golden Comps Casino, Intertops, Kings Casino, Kings Club, Pharaohs Casino, Slots Casino, Sands Of The Caribbean, States Casinos, Bullwhackers Casino, Foxwoods Casino, Castaways Las Vegas, Resorts Atlantic City, and Littlewoods Casino.

Windows Casino does not incorporate the Complainantís logo design or distinctive mark characteristics. Windows Casino has had a strong graphical image and brand identity for nearly 3 years. While the Complainantís Windows logo is always used with single colored, thin lettering and an upper case W and lower case "indows" Windows Casino's WINDOWS word is always used with thick uppercase gold gradient lettering with casino style glitter and flare effects. Windows Casino's logo contains two gold dice clearly identifying itself as a casino. There has never been anyone who has been confused by the two logos. There has never been a case of mistaken brand identity.

Windows Casino is available through a downloadable application. Because most of the world's computers operate on the Complainant's operating system, Windows Casino must be available for that operating system. For the installation of virtually any program on a Windows system, the download interface displays a recommendation that user exit all other programs. Most of the applications programs that operate on the Complainant's operating system request that other applications be closed in order for the installation to be successful. Consequently, the Windows Casino statement advising closure of other programs, is not unusual and would not mislead anyone into thinking that an installation program that contains this statement would be a product that the Complainant markets.

There are many examples of other uses of the word "windows". The heading of the printout of the first page of a USPTO search for "windows" indicates that there are 1966 instances of the use of the word "windows" in trademark listings on file.

The word "windows" is subject to substantial third party use unaffiliated with the Complainant. A search on the Internet search engine Google.com for the word "windows" yields innumerable third-party web pages.

The Israeli address referred to by the Complainant is in fact, the address of Respondentís business activities.

The Respondent maintains offices and operations in many locations throughout the world. His addresses have included: Jerusalem, Israel and San Jose, Costa Rica.

Because of the nature of the business activity and the occasional anger of patrons, casino business are subject to threats, harassment, extortion attempts and violence. Land-based casinos have numerous layers of security for protection. Accordingly, the Respondent has found it desirable to maintain a layer of protection from these activities. Packages addressed to the addresses listed above often are refused unless a delivery is expected from an identified source to avoid the threat of mail bombs and intrusive visitors.

The Respondent responded to every letter sent by the Complainant except one that was not received. The addressing system and mail delivery service in Costa Rica and Santo Domingo are rudimentary, ineffective and inefficient.

The Respondentís lawyer, who was contacted by the Complainantís lawyerís offices, was representing the Respondent, had provided previous representation of the Respondent and was not familiar with the issues. The Respondent also believes that there was inadequate performance and insufficient representation on the part of the lawyer.

The following information is derived from the Complainantís Reply.

The Respondent refers to a company called "Angel de la Manana, S.A." (also referred to as "ADLM") and its alleged predecessor "Hypervision" on the assumption that these entities are the respondents in this matter. The Response does not explain any relationship between the Respondent and ADLM, or between Hypervision and ADLM. Without explanation, the response refers to ADLM as "Respondentís company". And the Respondent states that he "was an associate of ADLM" at some undisclosed past period of time.

The Respondent does not deny that he received the letters from the Complainantís representatives by e-mail. The one response received by the Complainant was in the form of an e-mail message from "Andrew Goldman" advising the Complainant to address its concerns regarding "WindowsCasino" to a named attorney.

The Respondent fails to explain why, on the same date that the Complainant filed the Complaint in the instant proceeding he changed the contact information for the subject domain name from an address in Costa Rica to an address in the Dominican Republic. Affidavits submitted with the Response indicate that ADLM "has its principal place of business in Costa Rica".

The Respondent commented on the Reply by stating that it did not advance the Complainantís case.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on its use and registration of the word "windows" and asserts that the subject domain name is confusingly similar because the subject domain name fully incorporates the Complainantís mark and differs only by the addition of the word "casino". Reference is made to Panavision Intíl, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) for the propositions that users who are unsure of the owner of a domain name will assume that the domain name is the ownerís name and that a domain name that mirrors a companyís name may be a valuable corporate asset. The Complainant contends that users will be confused and will conclude that the website to which the subject domain name resolves is sponsored or endorsed by the Complainant.

The Complainant contends that the Respondent does not have a legitimate interest in the subject domain name because the Respondent has no license or permission to use the Complainantís mark.

Bad faith is said to be shown by the fact that the Respondent must have known of the Complainantís mark when the subject domain name was registered and by the fact that the Respondent uses the subject domain name to market goods and services in direct competition with the Complainant.

The Complainant states that the Respondent has provided inaccurate and misleading contact information and has protracted this proceeding by failing to respond to the Complainantís efforts to make contact. The Complainant contends that this conduct confirms the bad faith of the Respondent.

B. Respondent

The Respondent asserts that "Öthe instant case is not a clear case of "cybersquatting" and "cyber piracy" and should be dismissed.

He challenges the validity of the Complainant mark or its exclusivity, noting that the word "windows" is used extensively both in the context of trademarks and generally. The Respondent provides details of the operation of Windows Casino in juxtaposition to the business of the Complainant and asserts that there is no confusion in the marketplace.

The Respondent contends that the Complainant has not established that he does not have a legitimate interest in the subject domain name. He points to the substantial investment that has been made in Windows Casino and the extensive operations it conducts.

Bad faith is denied. The Respondent asserts that he did not acquire the subject domain name to sell it and has made no attempt to do so. He also says that he has no intention of diverting custom from the Complainant and states that the parties are in different businesses.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

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

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

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

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

Reference is made to domain name dispute decisions and to the decisions of domestic courts. While these are neither controlling nor binding on this administrative panel, often consideration of them is of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the word "windows" both by registration and extensive use. The Respondent appears to question the legitimacy of the Complainantís mark and notes significant use of the word "windows" by others.

A domain name dispute is not usually a forum to consider challenges to the legitimacy of registered trade-marks. Extensive use by others in contexts and for purposes not associated with a trade-mark owner, may be relevant to a consideration whether a domain name is confusing, but domain name dispute administrative panels generally must decline to find that a complainant does not have an interest to be protected when the interest is a registered trade-mark.

The Respondent provides details of the operational differences between his Windows Casino web site and the Complainantís business and products. The Respondent contends that users are not confused who is operating the site or by any possible association with the Complainant and its products. The issue does not turn on operational confusion or lack thereof. The inquiry is simply whether, objectively, a domain name is confusingly similar to a complainantís mark.

In this case, there is no obvious connection between "windows" and "windowscasino" taken objectively, but in some circumstances, the incorporation of a mark in a domain name will lead to confusion notwithstanding the balance of the text of the domain name.

This can occur when the mark clearly identifies its owner and the mark is a coined word Ė the Panavision case is an example Ė or when the mark, standing by itself has such widespread notoriety that identification with its owner is virtually automatic in a specific context.  The latter probably applies today to the word "Windows" and the Complainant when referring to computer operating system software, even though the word "windows" standing alone is likely a generic word in the English language.

The Complainantís mark has worldwide notoriety and recognition. This is an important factor in this case.

The question is whether the subject domain name is confusingly similar to the Complainantís mark. Part of the inquiry is whether users are likely to confuse the two, that is, to believe that the subject domain name is affiliated with or authorized by the Complainant. In the circumstances of this case, this is likely to be so. In addition to the general notoriety of the word "windows" in association with the Complainant, the fact that both the subject domain name and the Complainantís mark are used in the context of computers and the Internet adds weight to the likelihood of confusion.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainantís case related to the Respondentís lack of a legitimate interest in the subject domain name is based solely on its case to support the first requirement of the Policy; that is: it owns the mark "windows" and the Respondent has no authority to use it. Sometimes support for such an approach is found in the proposition that there is no conceivable use by a respondent of the domain name in question which would not offend the complainantís rights.

The proposition assumes the complete dominance and integrity of the mark and usually is brought into play when the domain name in question is identical to a mark. Some cases lend themselves to such an approach, but this case does not.

The Respondent identifies other users of the word "windows", which itself is a generic word. The Complainant took no exception to this information.

More importantly, the Respondent has presented a significant amount of information concerning its actual use of the subject domain name, including amounts spent to promote its business and the type and volume of activity connected to the subject domain name.

The Complainant does not contest the data presented by the Respondent.

It may be that the Respondentís activities trespass on the intellectual property rights of the Complainant, but consideration of the merits of such a contest generally is not within the mandate of domain name dispute administrative panels where there is information presented of diverse use generally of a word that constitutes a mark and ongoing business activity by a respondent which uses the domain name in issue.

To establish that the Respondent in this case does not have a legitimate interest in the subject domain name, the Complainant would have to do more than merely point to its mark and to the lack of permission to use the word "windows" as part of the subject domain name.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

A major thrust of the Complainantís case for bad faith is the apparent lack of accurate contact information for the Respondent and the Respondentís failure to respond to the Complainantís attempts to make contact. These are troubling facts and the Respondentís explanations suggest a certain amount of guile; it raises a suspicion of a lack of candor.

The Respondent has given reasons for his use of the word "windows". They are shaded somewhat by his lack of candor concerning the contact information and response, but they remain unchallenged and unrefuted by the Complainant.

Although conclusions reached concerning the first two components of a case do not determine whether there is bad faith, often the facts that lead to the conclusions are relevant to the issue.

The Complainant takes exception to the Respondentís statement that ADLM also is a respondent. The comment is made in the opening paragraph of the Response, but nothing further appears to have been made of the point.

The Complainant points to the notoriety of its use of the word "windows" and contends that the Respondent must have known of the Complainantís rights when he registered the subject domain name. The Complainantís contention must be anchored in the proposition that its rights to the word "windows" are exclusive for all purposes, a proposition with which the Respondent disagrees and which the data suggest is not the case. It seldom will be the case that a trade-mark owner will have the exclusive right to use a generic word. In the absence of facts beyond the notoriety of a mark, registration of a domain name that incorporates a generic word is not prima facie bad faith.

In this case, the Respondent has made a legitimate use of the subject domain name. He does not appear to have attempted to sell it. The information is that he has an extensive investment in it and has made extensive use of it. These facts militate against a conclusion that the subject domain name was registered in bad faith.

The Complainant contends that the Respondent has acted and is acting in bad faith because he uses the subject domain name to offer goods and services that compete with those offered by the Complainant. The Respondent disputes this and has provided some details of the differences between the operations of the parties. Although not determinative, the core businesses of the parties clearly are different.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has not established its case. It is dismissed.

 


 

Edward C. Chiasson, Q.C.
Presiding Panelist

Dan Hunter
Panelist

G. Gervaise Davis III
Panelist

Dated: April 15, 2003