WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Damian Macafee

Case No. D2004-0027

 

1. The Parties

The Complainant is Microsoft Corporation, of Redmond, United States of America, represented by Freshfields, Bruckhaus, Deringer, of London, United Kingdom.

The Respondent is Damian Macafee, of London, United Kingdom.

 

2. The Domain Name and Registrar

The disputed domain name <micorosft.com> (the Domain Name) is registered with BulkRegister.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 14, 2004. On January 15, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On the same day, BulkRegister.com 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 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 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 13, 2004.

The Center appointed Ross Wilson as the sole panelist in this matter on February 19, 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

The Complainant 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, online services and information delivered via the Internet. Since its inception in 1975, Microsoft has created software and Internet services for use in the workplace, home and 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 internet devices, online information and entertainment services, electronic commerce services and computer publications.

The Complainant offers these goods and services to the public under the registered trade mark MICROSOFT. The Complainant owns trade mark registrations for MICROSOFT in various countries around the world.

Microsoft has spent substantial time, effort and money advertising and promoting the MICROSOFT trade mark throughout the world. As a result, the MICROSOFT mark has become distinctive and well-known and the Complainant has developed considerable goodwill in the brand to the extent that Interbrand ranks it as the second most valuable brand in the world.

The Complainant has established Internet websites located at domain names comprised of the MICROSOFT trade mark, including "microsoft.com" and "microsoft.net". 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 the Complainant. The Microsoft websites include different home pages for many of the countries in which the Complainant markets its products and services. The Complainantís rights in the MICROSOFT trade mark predates the Respondentís registration of the Domain Name.

On November 11, 2003, the Complainant sent a letter to the Respondent demanding that the Respondent cease using the Domain Name and transfer ownership of the Domain Name to the Complainant. The courier was informed that nobody answering to the Respondentís name was known at that address. The courier nonetheless delivered the letter through the letterbox. A copy of the letter was sent by e-mail on November 25, 2003, to the e-mail address listed in the WHOIS registration for the Domain Name. The Respondent did not reply to the original letter or the subsequent e-mail.

The Respondent registered the domain name on June 26, 2000. The disputed domain name resolves to another web site advertising links to a number of other sites. All attempts (mail and email) to contact the Respondent by WIPO and the Complainant have failed.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainantís trade mark as the only difference between the Domain Name and the Complainantís trade mark is the deliberate misspelling of the MICROSOFT mark. This has been achieved by moving the two "O"s in the MICROSOFT mark from their position on either side of the letter S in MICROSOFT, to either side of the letter R. This conduct, commonly referred to as "typo squatting", has been established in previous UDRP decisions to create confusion in the minds of users. Given the extent of the Complainantís promotion and advertising of the MICROSOFT trade mark, it cannot reasonably be argued that a person registering the Domain Name could have been unaware of the Complainantís use of and trade mark rights vested in MICROSOFT. The Domain Name is also confusingly similar to the Complainantís website "www.microsoft.com".

The Complainant argues that the Respondent has no right or legitimate interest in the Domain Name. There is no relationship between the Respondent and the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use its name or its MICROSOFT trade mark or register a domain name incorporating its name or trade mark. The Complainant is not a customer of the Respondent. There is no suggestion that the Respondent is commonly known by the name "Micorosft" or that it has acquired any trade mark rights in that name.

The Complainant contends that the Domain Name has been registered and is being used in bad faith. When an Internet user types "www. micorosft.com" into the address bar of his or her Internet browser, the user is redirected to another website containing hyperlinks to sites offering goods and services for sale. The Complainant argues that the primary purpose for which the Respondent has registered and is using the Domain Name is to attract, for commercial gain, Internet users to the site by creating a likelihood of confusion with the Complainantís MICROSOFT mark as to the source, sponsorship, affiliation, or endorsement of the site or of a product or service on the site. There is no element in the Site that would in any way justify the Respondentís use of "micorosft" in the Domain Name. The Respondent is, therefore, taking free advantage of the goodwill and reputation of the Complainantís trade mark as part of a financially-driven attempt to draw Internet users to the Site. As a result, the Complainantís trade mark MICROSOFT is being diluted and tarnished, and the goodwill that the Complainant has established to date is being damaged.

The Complainant contends that the respondent has registered the Domain Name in bad faith. The Respondentís true motives are revealed by the fact that he has registered a variety of other domain names and has been the subject of numerous UDRP proceedings in the past. The Respondentís other registrations include:

<holidayinncitycentre.com>;
<nestlebabyruth.com>;
<philipsconsumer.com>; and
<radissonftmagruder.com>.

The Complainant suggests that it may well be that the Respondent has registered other domain names which are identical or confusingly similar to famous trade marks which the Complainantís searches have not revealed.

To the Complainant it appears that the Respondent has engaged in a pattern of conduct of registering well-known brands and trade marks as domain names, the effect of which is and has been to attempt to deprive the owners of these trade marks from registering a domain name reflecting their corresponding registered trade marks. Further evidence of the Respondentís pattern of conduct can be adduced from the fact that the Respondent has been the subject of numerous UDRP proceedings in the past, the majority of which have resulted in a decision to transfer the domain name in question. The domain names which were the subject of these disputes were:

<polaroid.ne>;
<baseballweekly.com>;
<jvc-america.com>;
<oxford-online.com>;
<attworld.net>; and
<carrefour.net>.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

A: Identical or Confusingly Similar

The Complainant clearly has trademark rights in the word "microsoft" dating back to use in 1975, UK registrations from 1979, and European Community registrations from 1996.

The disputed domain name <micorosft.com> differs from the Complainant's established trademark rights by the typographical transposition of the two letters "o" on either side of the letter "r" instead of the letter "s". In the Panel's view, the visual appearance of the word "micorosft" in the disputed domain name gives the impression that it is the same as the Complainant's trademark and is likely to cause confusion.

This confusion is quite similar to the disputed domain name <microosoft.com> in Microsoft Corporation v. Charlie Brown (WIPO Case No. D2001-0362) where it was held to be visually the same as the Complainant's trademark. Other examples where disputed domain names with typographical errors or misspelled variations of trademarks have been held to be "confusingly similar" include; American Online Inc. v. John Zuccarini (WIPO Case No. D2000-1495), The Toronto-Dominion Bank v. Boris Karpachev (WIPO Case No. D2000-1571), Google Inc. v. Namerental.com and Leonard Bensonoff (WIPO Case No. D2001-0060), Telstra Corporation Limited v. Kandasamy Mahalingam (WIPO Case No. D2000-0999) and Hobsons, Inc. and Peter Carrington a/k/a Party Night Inc. (WIPO case No. D2003-0317). The American Online case well summarises the position taken on misspellings where it was stated that "The mere addition of a minor misspellingÖdoes not create a new or different mark in which the Respondent has rights. Instead it results in a domain name that is confusingly similar to the Complainant's mark".

Based on this view and on the previous decisions dealing with typographical errors and misspellings, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of ICANN's Uniform Domain Name Dispute Resolution Policy sets out how a Respondent can demonstrate rights to and legitimate interest in the disputed domain name. The ways include, but are not limited to:

(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 an organisation) 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 non-commercial 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."

Based on the information before the Panel, none of the above ways of demonstrating rights to or legitimate interests in the disputed domain name could possibly be maintained by the Respondent. The Respondent registered its domain name well after the Complainant obtained rights in its trademark. There is no evidence that the Respondent is commonly known or has acquired rights in the domain name. The Complainant has stated that the Respondent is not a representative of the Complainant or licensed to use the Complainant's trademark.

Finally, the Respondent's use of the disputed domain name deliberately diverts those Complainant's customers or those Internet users interested in the company's products but who unintentionally make a typographical error when typing in the Complainant's mark or name. Consequently, no legitimate non-commercial or fair use of the domain name can be found.

Based on the evidence presented, it is the Panel's view that the Respondent has no rights or legitimate interests to the disputed domain name.

C. Registered and Used in Bad Faith

For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The circumstances of paragraph 4(b) involve possible bad faith motives of: (1) selling, renting or otherwise transferring the domain name for valuable consideration, (2) preventing the trademark owner from having its trademark as a domain name (provided there is a pattern of such conduct), (3) disrupting the business of a competitor or (4) attracting Internet users to a website for commercial gain by creating confusion with the Complainant's trademark.

In this case, the last of the above bad faith motives is apparent, that is, attracting Internet users to a website for commercial gain by creating confusion with the complainant's trademark. There can be no doubt that the Respondent was aware of the Complainant's trademark and associated reputation when it registered the misspelling of the well-known trademark as a domain name.

The Respondent appears to have deliberately registered a domain name that would capitalize on typographical errors based on the Complainant's trademark. In other words it was designed to take advantage of Internet users who mistype it. In Google Inc. v. Namerental.com and Leonard Bensonoff (WIPO Case No. D2001-0060) the Panelist found that a minor spelling variant to a well-known mark, without any explanation, alone creates a prima facie inference of bad faith. Similarly, in AltaVista Company v. Saeid Yomtobian (WIPO Case No. D2000-0937) the Panelist found "the use of misspellings alone is sufficient to prove bad faith under paragraph 4 (b)(iv) of the [ICANN] policy because the Respondent has used these names intentionally to attract, for commercial gain, Intenet users to his website by making a likelihood of confusion with the Complainant's mark". As in the Google and AltaVista cases, no evidence to overcome the bad faith registration and use inference has been submitted to the Panel.

In the Panel's view the distinctiveness and reputation of the Complainant's well-known trademark and the improbability of the Respondent coming up with the disputed domain name name independently provides no obvious explanation other than the registration and use was made in bad faith with the intent to attract business to its site, disrupt the business of the Complainant and/or profit from the eventual sale of the domain name. Similar conclusions about opportunistic bad faith registration are found in numerous decisions, such as, Cellular One Group v. Paul Brien (WIPO Case No.D2000-0028), Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), Charles Jourdan Holding AG v. AAIM (WIPO Case No. D2000-0403), Nintendo of America Inc v. Pokemon (WIPO Case No. D2000-1230), Neuberger Berman Inc v. Alfred Jacobsen (WIPO Case No. D2000-0323) and Telstra Corporation Limited v. Brett Micallef (WIPO Case No. D2000-0919).

Finally, the lack of a response to this complaint infers that the Respondent could not provide any good faith use of the domain name (see Encyclopaedia Britannica v. John Zuccarini, WIPO Case No. D2000-0330 and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633).

In view of the evidence provided, the precedent found in similar cases, the past pattern of behaviour, the lack of response and the incorrect contact information, the Panel finds that the Respondent registered and used the disputed 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 <micorosft.com> be transferred to the Complainant.

 


 

Ross Wilson
Sole Panelist

Date: March 1, 2004