WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Jason Park
Case No. D2003-1053
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 Jason Park, of San Jose, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <microsoftcorp.com> (the "Domain Name") is registered with NameSecure.com (a VeriSign company).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 31, 2003. On January 5, 2004, the Center transmitted by email to NameSecure.com (a VeriSign company) a request for registrar verification in connection with the Domain Name. On January 8, 2004, NameSecure.com (a VeriSign company) 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. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2004. The Respondent did not file any response. Accordingly, the Center provided notice of the Respondentís default on January 29, 2004.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on February 17, 2004. 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
(a) Microsoft is a well-known, worldwide provider of computer software and related products and services, including products for use on the Internet and for developing Internet software, and online services and information delivered via the Internet.
(b) Microsoft offers these goods and services to the public under the United States federally registered trademark "MICROSOFT" (the "MICROSOFT Mark"). The United States Patent and Trademark Office ("USPTO") has granted federal trademark registrations for the MICROSOFT Mark in numerous classes of goods and services.
(c) 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 MICROSOFT Mark.
(d) 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>.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:
(i) The Domain Name is identical or confusingly similar to the MICROSOFT Mark.
(ii) The Domain Name is confusingly similar to the Complainantís website addresses incorporating the MICROSOFT Mark.
(iii) The addition of the generic term "corp." to the MICROSOFT Mark is insufficient to avoid confusion with the registered trademark.
(iv) The Respondent has no legitimate interest in the Domain Name. 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.
(v) The Respondent has never been known by the name "microsoftcorp," or by the domain names incorporating the foregoing.
(vi) Simply linking a confusingly similar domain name to a website substantially similar to Microsoftís official website is not a legitimate use.
(vii) The Respondentís misappropriation of the <microsoftcorp.com> domain name was no accident.
(viii) The Respondent has registered the Domain Name in bad faith by doing so with knowledge of the Complainantís rights in the MICROSOFT Mark. It is simply inconceivable that Respondent was unaware of Microsoftís rights in the MICROSOFT Mark, which as noted above, has achieved worldwide fame.
(ix) The Respondentís use of the <microsoftcorp.com> domain name to link to Microsoftís official website demonstrates bad faith use.
The Respondent did not reply to the Complainantís contentions and is in default.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules, it is established that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
In light of the above, the Panel may draw such inferences from the Respondentís failure to comply with the Rules as he considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to the Complainantís trademark or service mark;
(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.
A. Identical or Confusingly Similar
The Complainant has registered the MICROSOFT Mark in various countries in connection with numerous classes of goods and services (see Exhibit of the Complaint). The Domain Name wholly incorporates the Complainantís distinctive trademark and as such creates sufficient similarity to be confusingly similar (see Section 4(a) of the Policy).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainantís trademark pursuant to the Policy Paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of proof, several WIPO decisions have held that "once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing" (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the Domain Name; the Panel further notes that the Respondent has not, and has never been, commonly known by the Domain Name. The Panelís view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the Domain Name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph 4(b) of the Policy.
C. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainantís trademark is very well known worldwide, it is very unlikely that the Respondent, at the time of registration of the Domain Name or thereafter, was not aware that he was infringing the Complainantís trademarks.
Bad faith can be presumed based on the fame of the Complainantís marks, such that the Respondent was aware or should have been aware of the Complainantís well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices the United States of America would have made the Complainantís registrations known to the Respondent.
The Respondent is, in using the Domain Name, diverting Internet users to the Respondentís website. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554).
The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered the Domain Name in bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.
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 <microsoftcorp.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: March 5, 2004