WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Sergei Letyagin

Case No. D2004-0046

 

1. The Parties

The Complainant is Microsoft Corporation, Redmond, Washington, United States of America (USA), represented by Arnold & Porter, USA.

The Respondent is Sergei Letyagin, Moscow, Russian Federation.

 

2. The Domain Name and Registrar

The disputed domain name <microsoftcorporation.com> (the "Domain Name") is registered with eNom (the "Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 21, 2004. The Center transmitted its request for registrar verification by email to the Registrar the same day. The Registrar did not respond to the Centerís request; accordingly, on January 27, 2004, the Center independently verified from the appropriate WHOIS database that the Domain Name was registered with the Registrar, that the Respondent, Sergei Letyagin, was the current registrant of the Domain Name, and that the status of the registration was locked. The Registrarís registration agreement is in English, incorporates the Policy, and provides that the registrant submitted to the jurisdiction of the Western District of Washington State (this being the mutual jurisdiction to which the Complainant agreed to submit with respect to any challenge to this Decision).

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 by post, fax and email to the addresses and fax number indicated in the WHOIS database and to postmaster@microsoftcorporation.com, and the proceedings commenced on January 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 18, 2004.

The Center appointed Jonathan Turner as the sole panelist in this matter on February 25, 2004. 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.

Having reviewed the file, the Panel finds that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant is the well-known developer and supplier of computer software and related services. Its trademark MICROSOFT has been used on a very extensive scale in connection with its software and services, and has been registered by the Complainant as a trademark in the USA, Russian Federation and other countries. The Complainant provides information about its products and services through websites at "www.microsoft.com" and "www.microsoft.net".

The Complainantís products include a software application facilitating the creation and operation of websites which has been sold on an extensive scale under the trademark FRONTPAGE. This trademark was registered in the USA by the Complainantís predecessor-in-interest and has been transferred to the Complainant.

The Respondent registered the Domain Name and is using it to promote a website purporting to sell web hosting services, in particular for customers using the Complainantís FRONTPAGE software. The web page to which "www.microsoftcorporation.com" resolves carries a banner reading:

"FrontPage Web Hosting: Microsoft Web Hosting Service providing FrontPage hosting with expert support in hosting microsoft, web hosting frontpage, and frontpage web hosting services."

The page goes on to say:

"If you are looking for web hosting for FrontPage, then you've found it. www.Hosting-Frontpage.com provides The best Windows, FrontPage, and Microsoft website hosting on the net - at the lowest cost - and with the highest reliability. No other host provides such compelling features with the speed, guaranteed uptime, and hosting microsoft support at this low price. Compare all other web-hosting services and you'll see why Hosting Frontpage is rated the number 1 web hosting service."

There is also a pop-up advertisement which reads:

"Looking for the Best Web Host for FrontPage? Find out who's independently rated #1 in Price, Reliability, and Support"

The Respondent also registered the domain name <bentleyforcongress.com>, after a US congressional candidate, Helen Bentley, allowed her registration of this name to expire; and the domain name <naomiandthesegos.com>, after a gospel singing group called "Naomi and the Segos" allowed its registration of this name to expire. The group paid the Respondent to recover that domain name.

 

5. Partiesí Contentions

The Complainant contends that the Domain Name is confusingly similar to the trademark MICROSOFT in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith, in particular to divert Internet users seeking information about the Complainantís products or services to the Respondentís website. The Complainant requests that the Domain Name be transferred to it.

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

In accordance with the Policy, paragraph 4, to establish a valid complaint in relation to a domain name, the Complainant must prove (A) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (B) that the Respondent has no rights or legitimate interests in respect of the domain name; and (C) that the domain name has been registered and is being used in bad faith.

These requirements are considered in turn below.

A. Domain Name Identical or Confusingly Similar to Complainantís Trademark

There can be no doubt that the Domain Name is confusingly similar to the trademark MICROSOFT in which the Complainant has rights. The second-level domain (SLD) of the Domain Name consists of the Complainantís well-known trademark followed by the generic word "corporation", and the combination is identical to the Complainantís corporate name. Internet users would obviously take the Domain Name to indicate the Complainant and would expect to find the Complainantís website at that address. The first requirement of the Policy is satisfied.

B. Respondent does not have Rights or Legitimate Interests

The Panel considers that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

In certain circumstances, it is legitimate for another trader to make fair use of a trademark to refer to products which have been placed on the market under that trademark by or with the consent of its proprietor (see e.g. WIPO Decision D2000-1778 <philips-indonesia.com>). However, in this case the Respondentís use of the Domain Name has not been legitimate or fair.

In the first place, the business advertised using the Domain Name is not in fact supplying products which have been placed on the market by or with the consent of the Complainant. Although the Complainantís software may be used in connection with the services provided by this business, the Domain Name is not an apt description of those services. Secondly, the SLD is the full corporate name of the Complainant and many Internet users would expect a website at this address to be the Complainantís own website. Thirdly, the website does not make it clear that the business being promoted is not operated or approved by the Complainant.

In these circumstances, the Respondentís use of the Domain Name does not give him any right or legitimate interest. There is no reason to suppose that the Respondent could claim a right or legitimate interest in respect of the Domain Name on any other basis. The Panel finds that the second requirement of the Policy is satisfied.

C. Domain Name Registered and Used in Bad Faith

The Panel also considers that the Domain Name was registered and is being used in bad faith. As stated above, the Panel considers that Internet users are likely to suppose that a website at the Domain Name is the Complainantís own website. Furthermore, the website to which the Domain Name is directed does not make it clear that it and the business which it advertises are not operated or approved by the Complainant. Nor is the Domain Name an apt description of this business.

By using the Domain Name in this way, the Respondent is evidently attempting to attract Internet users to this website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the website and the service promoted on it. This is one of the circumstances specifically identified in the Policy, paragraph 4(b)(iv) as constituting evidence of bad faith. There is no countervailing evidence leading away from the conclusion that the use is in bad faith and it is reasonable to infer that the Domain Name was also registered in bad faith.

This conclusion is also supported by the undisputed evidence that the Respondent registered the domain name <bentleyforcongress.com>, after a congressional candidate, Helen Bentley, allowed her registration of this name to expire; and the domain name <naomiandthesegos.com>, after a gospel singing group called "Naomi and the Segos" allowed its registration of this name to expire. It is debatable whether these two instances would suffice to constitute a pattern of blocking registrations within the meaning of the Policy, paragraph 4(b)(ii), and it seems that the Domain Name in the present case may have been registered primarily for the purposes of diversion rather than blocking. Therefore, it does not appear to the Panel that the present cases falls precisely within the Policy, paragraph 4(b)(ii). Nevertheless, the speculative registration of these other domain names is an indication that the Respondent is not averse to misusing the domain name system.

The Panel concludes that the third requirement of the Policy is satisfied.

Since the requirements of the Policy are satisfied and since the SLD of the Domain Name is identical to the Complainantís corporate name, it is appropriate to order that it be transferred to the Complainant.

 

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, <microsoftcorporation.com>, be transferred to the Complainant.

 


 

Jonathan Turner
Sole Panelist

Date: March 7, 2004