WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Solutions International
Case No. D2003-0935
1. The Parties
The Complainant is Microsoft Corporation, of Redmond, Washington, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Solutions International, c/o Mr. Max Luna, of New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <microsoftbasics.com> is registered with Stargate.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2003. On November 26, 2003, the Center transmitted by email to Stargate.com a request for registrar verification in connection with the domain name at issue. On November 26, 2003, Stargate.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. An Amendment to the Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 27, 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 on December 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 29, 2003.
The first panel appointment was made by the Center on January 12, 2004. However, the Panel invited was unable to provide a decision, leading to the appointment of the undersigned. 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 the Rules, paragraph 7.
4. Factual Background
Complainant, Microsoft Corporation, is a Washington, United States of America corporation with its principal place of business in Redmond, Washington, United States of America.
The Complainant is a well-known, worldwide provider of computer software and related products and services. 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, on-line information and entertainment services, electronic commerce and computer publications.
In connection with its goods and services, the Complainant has registered the MICROSOFT mark in the United States Patent and Trademark Office in numerous classes of goods and services, e.g., United States Trademark Registration No. 1,200,236 issued July 6, 1982, claiming use since November 12, 1975. Complainant has also registered in the United States Patent and Trademark Office trademarks comprising the word MICROSOFT and other formatives for various goods and services. With respect to the MICROSOFT registrations, Complainant has registered the mark for such goods and services as telecommunication services in Class 38, providing information concerning travel and travel-related services over computer networks and global communications networks in Class 39, providing information in the fields of business and commerce over computer networks and global communications networks in Class 35, and computer and component parts therefor, computer peripherals, computer keyboards, computer video control devices, computer software in Class 9 as examples.
The Respondent, Solutions International, registered the domain name <microsoftbasics.com> on April 2, 1999. At the time of the Complaint, the domain name resolved to a website having pornographic content.
5. Partiesí Contentions
The Complainant contends that:
· Complainant has spent substantial time, effort and money advertising and promoting the MICROSOFT mark throughout the United States and the world. As a result, the MICROSOFT mark has become world famous and the Complainant has developed an enormous amount of goodwill in the mark.
· Complainant has established an Internet website which can be reached through domain names comprised of the MICROSOFT mark, including <microsoft.com> and <microsoft.net>. Complainantís websites allow computer users throughout the United States and the world to access information regarding Complainant and its products and to use and enjoy the Internet services provided by Complainant.
· The disputed domain name is identical or confusingly similar to Complainantís famous MICROSOFT mark, because it wholly incorporates the MICROSOFT mark and adds only a generic term "basics".
· The disputed domain name is confusingly similar to Complainantís own domain names and trademarks and it is likely to cause confusion among Complainantís customers.
· 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 and, therefore, has no legitimate interest in the disputed domain name.
· The Respondent is intentionally diverting customers of the Complainant through the use of the disputed domain name to its own website that includes pornographic images and provides links to pornographic websites from which Respondent receives financial remuneration.
· Respondentís misappropriation of the <microsoftbasics.com> domain name was not by accident because the MICROSOFT mark is world famous and the registration of the disputed domain name occurred well after the MICROSOFT mark became famous.
· By incorporation of the famous MICROSOFT mark in the disputed domain name, there should be no question that the Respondent was well aware of the fame of the MICROSOFT mark when it registered the disputed domain name.
· Furthermore, Respondent should have constructive notice of Complainantís trademark rights in the MICROSOFT mark by virtue of Complainantís federal and international trademark registrations for this mark, which precede the Respondentís registration of the disputed domain name by over a decade.
· To the extent the Respondent may argue that the pornographic content on the website at the time of the Complaint was provided by others and that the domain name was merely being held for further development, such passive holding does not confer a legitimate interest on Respondent. Respondentís failure to make legitimate use of the domain name during the four years transpiring since registration belies any argument that the domain name was registered in preparation for a bona fide offering of goods.
· Respondent registered the <microsoftbasics.com> domain name in bad faith and has used such domain name in bad faith.
The Respondent did not reply to the Complainantís contentions and is in default. Respondent has not denied Complainantís contentions.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <microsoftbasics.com> transferred to itself, Complainant must prove the following:
(Policy, paragraphs 4(a)(i-iii)):
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns numerous United States trademark registrations for the MICROSOFT mark, some claiming use since 1975. Complainant has also registered the domain names <microsoft.com> and <microsoft.net> through which consumers can access information regarding Complainant and its products and to use the Internet services provided by Complainant. This Panel has noted that the <microsoft.com> domain name was created on or about May 2, 1991, according to Network Solutions Whois record.
The disputed domain name, <microsoftbasics.com> incorporates Complainantís established trademark in its entirety and adds a common generic term. It is well established that the addition of a common generic term to an established trademark in a domain name does not create a new trademark or avoid confusion. America Online, Inc., v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (January 19, 2001).
Numerous prior panels have found the MICROSOFT trademark to be famous and this Panel does not disagree. Therefore, based upon established precedent dealing with the addition of common generic words to trademarks, the Panel finds that the disputed domain name is confusingly similar to Complainantís trademark.
B. Rights or Legitimate Interests
The Panel further finds Respondent has no rights or legitimate interests in the disputed domain name. It is not refuted that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the MICROSOFT mark in a domain name or in any other manner. Nor has it been demonstrated that the Respondent is commonly known by or has acquired rights in the domain name. The Respondentís use of the disputed domain name to deliberately divert Internet users interested in Complainant or its products and services is not a bona fide offering of goods or services. V&S Vin & Spirit Aktiebolag v. Almgreen.com a/k/a Martin Almgren, NAF Claim No. FA97853 (July 31, 2001); MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000). This Panel finds that the Respondent has not offered any evidence of non-commercial or fair use of the disputed domain name to refute the Complainantís allegations.
C. Registered and Used in Bad Faith
It is well established that the unauthorized use of the Complainantís renowned mark to promote pornographic content for financial gain is not a good faith use of the mark. V&S Vin & Spirit AB v. Canal Prod Ltd., WIPO Case No. D2002-0437 (July 30, 2002); Microsoft Corporation v. S.L., Media Web, WIPO Case No. D2003-0538 (September 17, 2003). Furthermore, the Respondentís domain name that incorporates Complainantís trademark along with a common generic term to divert customers to Respondentís website for promotional gain cannot be considered a good faith use of the domain name. Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018 (December 18, 2002).
Finally, the lack of a response to the Complaint creates an inference that the Respondent could not provide any good faith use of the disputed domain name. Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
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 be transferred to the Complainant.
Nels T. Lippert
Date: April 15, 2004