WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Superkay Worldwide, Inc.

Case No. D2004-0071

 

1. The Parties

The Complainant is Microsoft Corporation of Washington, United States of America, represented by Ik-Hyun Seo, Republic of Korea.

The Respondent is Superkay Worldwide, Inc., of Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <microsoftmail.com> ("the Domain Name") is registered with Network Solutions, Inc. ("the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Medication Centre ("the Center") on January 28, 2004. On January 28, 2004, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the domain name at issue. On January 30, 2004, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details of the registrant and 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 February 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for a Response was February 23, 2004. The Respondent did not submit any response. Accordingly, on February 25, 2004, the Center notified the Respondent and the representative of the Complainant of the Respondentís default.

The Center appointed Antony Gold as the sole panelist in this matter on March 12, 2004. The Panel finds that it was properly constituted and 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 has stated and provided evidence in support of the following facts which, unless otherwise indicated, the Panelist accepts as established.

The Complainant regularly trades under the "MICROSOFT" brand and is one of the most recognised and famous companies in the world. The Complainant has operations and sales throughout the world, including Korea. Its products and services include various computer applications and publications as well as the development of information technology and associated services generally. In particular, the Complainant is a world-wide provider of e-mail products and services.

The Complainant has trademark registrations for "MICROSOFT" and trademarks including the term "MICROSOFT" throughout the world. The Complainant has provided evidence of 13 such trademark registrations in Korea, the most relevant being "MICROSOFT"; and, "MICROSOFT HOTMAIL". The trademark "MICROSOFT" was first registered in Korea on February 16, 1994. "MICROSOFT HOTMAIL" was registered in Korea on September 26, 2001.

The Complainant has invested substantial time and finance in advertising and promoting the "MICROSOFT" brand and associated trademarks throughout the world, including Korea. The Complainant states that the "MICROSOFT" brand and associated trademarks have become famous throughout the world and have acquired enormous valuable goodwill. Although the Complainant, does not, as would normally be the case, provide evidence in support of this assertion, the Panel accepts that the "MICROSOFT" brand is sufficiently prominent that a finding to this effect is possible without direct evidence.

The Complainant operates various websites which are based on the "MICROSOFT" brand and associated trademarks. Such websites are frequently accessed by consumers and the general public and include websites such as "www.microsoft.com" and "www.microsoft.net".

A Whois search dated December 26, 2003, shows the Domain Name as being registered on March 14, 2002.

On September 19, and 22, 2003, the Complainant contacted the Respondent via e-mail and registered mail respectively in relation to the Respondentís registration of the Domain Name. The Complainant requested that the Respondent provide a response by September 30, 2003. No such response was received by the Complainant.

The Complainant states that shortly after the letters of September 19, and 22, 2003, were sent, the website accessed by users seeking to access the Domain Name changed. Those seeking to access the Domain Name were re-directed to a website with the address "www.semo.com". The Complainant states that the website "www.semo.com" was revised on September 27, 2003, and contains an "anti-troop dispatch" logo and slogan, together with various trademarks, including those of Semo and Superkay Worldwide.

 

5. Partiesí Contentions

A. Complainant

The Complainant is required to prove that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the Domain Name. Specifically, the Complainant must establish that:

(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 the Domain Name; and,

(iii) the Domain Name has been registered and is being used in bad faith.

The Complainant makes the following assertions in relation to the Domain Name:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submits that the Domain Name is essentially identical and is confusingly similar to the Complainantís trademark registrations for "MICROSOFT" because the Domain Name incorporates the Complainantís trademark for "MICROSOFT" with the addition of the word "mail".

The Complainant submits that the word "mail" is to be considered as inconsequential since it is a common and non-distinctive term.

Additionally, the Complainant submits that the word "mail" is a description of some of the services provided by the Complainant through electronic mail features such as Microsoft Outlook and Microsoft Express, and electronic mail services such as "hotmail" (for which the Complainant already has trademark protection as indicated in section 4 above).

The Complainant further submits that the use of the term "Microsoft" by the Respondent was not authorised by the Complainant and that there is a likelihood of confusion that the Domain Name is in some way associated with or authorised by the Complainant.

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name.

The Complainant submits that the Respondent has no rights or legitimate interest in respect of the Domain Name because, to the best of the Complainantís knowledge, the Respondent is not registered as the proprietor of any trademark or registration for the term "Microsoft" in Korea or anywhere else in the world. The Complainant also states that the Respondent did not provide any explanation for its use of the term "Microsoft" when it had an opportunity to do so.

The Complainant submits that there is no evidence to suggest that the Respondent will use, or has made preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Complainant submits that the Domain Name currently only performs a forwarding function and that the website to which users are ultimately forwarded contains little content and does not offer the user any goods or services.

The Complainant submits that, to the best of the Complainantís knowledge, the Respondent is not commonly known by the Domain Name.

Accordingly, it says that the Respondent is not using the Domain Name in a manner that can be deemed a legitimate and non-commercial or fair use. The Domain Name is currently only used to forward traffic to "www.semo.com" and the Respondent submits that this is simply using the fame of the Complainantís "Microsoft" brand and associated trademarks to improperly increase traffic to an unrelated website.

(iii) The Domain Name was registered and is being used in bad faith.

The Complainant submits that there is no plausible reason or explanation for the Respondentís registration and use of the Domain Name and that the Respondent is attempting to take advantage of and/or profit from the goodwill associated with the "MICROSOFT" brand and associated trademarks.

The Complainant submits that it is not possible for the Respondent to have been unaware of the "MICROSOFT" brand and associated trademarks. The Complainant submits that the Complainantís Korean trademarks and registrations are easily accessible to the public in Korea via Korean language websites and the Korean Intellectual Property Office. Additionally, the Complainant submits that the Complainantís "MICROSOFT" brand and associated trademarks are regularly displayed in Korea and throughout the world in numerous software retail locations, office environments and advertising media.

The Complainant states that after receiving the letters of September 19, and 22, 2003, described in section 4, the Respondent used the Domain Name to forward traffic to the website "www.semo.com" and to incorporate an "anti-troop despatch" logo. The Complainant submits that neither of these actions can be seen as legitimate and are indicative of the Respondentís bad faith in this matter.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The relevant part of the Domain Name is "microsoftmail". For the purposes of assessing whether a domain name is identical or confusingly similar to a trademark in which the Complainant has rights, the ".com" suffix is disregarded, it being a necessary component of a ".com" Top Level Domain Name.

In support of its suggestion that the Domain Name is identical or confusingly similar to a mark in which it has rights, the Complainant contends that the "mail" element of the Domain Name should be disregarded for the purposes of comparison to the Complainantís trademarks because the word "mail" is generic and is descriptive of some of the services provided by the Complainant. In accordance with decisions such as ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625, the Panel finds that the term "mail" should be considered generic.

The combined word comprising the Domain Name, namely "microsoftmail" is thus found to be confusingly similar to the Complainantís registered mark for "MICROSOFT". It is also found that the Complainant has rights in this mark.

The Complainant asserts that the Respondent was never authorised or permitted to use the term "Microsoft" by the Complainant. The Respondent has not provided a response to this submission. The Panel finds that the Respondent was never authorised or permitted to use the term "Microsoft" by the Complainant.

Accordingly, the Panel finds that the Complainant satisfies paragraphs 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant states that, to the best of the Complainantís knowledge, the Respondent does not hold any registration for the term "Microsoft" as a trademark or service mark. Since the Respondent has not taken the opportunity to dispute this submission, and the Panelist can find no other evidence to the contrary, the Panelist finds that the Respondent is unable to demonstrate any right or legitimate interest in the Domain Name through the registration of a trademark or service mark similar to the Domain Name.

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances by which the Respondent may demonstrate a right or legitimate interest in the domain name.

In respect of paragraph 4(c)(i) of the Policy, the Complainant submits that the Respondent is unable to demonstrate use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services because the Domain Name currently only performs a forwarding function, redirecting users to a website which does not offer the user any goods or services.

In respect of paragraph 4(c)(ii) of the Policy, the Complainant submits that, to the best of the Complainantís knowledge, the Respondent is not commonly known by the Domain Name.

In respect of paragraph 4(c)(iii) of the Policy, the Complainant submits that the Respondent is not making a legitimate non-commercial or fair use of the Domain Name as the Respondent is seeking to use the fame of the Complainantís "MICROSOFT" brand and associated trademarks to improperly increase traffic to an unrelated website, namely "www. semo.com".

The Respondent has not taken the opportunity to respond to the Complainantís allegations and the Panel can find no evidence to suggest that any of the circumstances set out in paragraph 4(c) of the Policy are applicable.

In particular, the Panelist finds that whilst the use of the Domain Name appears to be non-commercial, the Respondentís use of a domain name which is so closely related to the Complainantís "MICROSOFT" brand and associated trademarks, is an attempt to misleadingly divert users to a website which is not related to the Complainant. Such use is neither a legitimate nor a fair use of the Domain Name.

Accordingly the Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the Domain Name in bad faith on the basis that the Respondent must have been aware of the Complainantís, "MICROSOFT" brand and associated trademarks prior to registration of the Domain Name and that the Respondent is seeking to take advantage and/or profit from the goodwill associated with the "MICROSOFT" brand and associated trademarks. Additionally, the Complainant submits that the Respondentís use of the Domain Name to forward traffic to an unrelated website containing an "anti-troop despatch" logo and unrelated trademarks is further evidence of the Respondentís bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which can constitute evidence of a Respondentís bad faith in registering and using a Domain Name.

The Panel can find no evidence that the Respondent has registered and used the site in bad faith as described within paragraphs 4(b)(i) or 4(b)(ii) of the Policy.

Paragraph 4(b)(iii) of the Policy provides that bad faith on behalf of the Respondent may be demonstrated in the event that the Domain Name was registered "primarily for the purpose of disrupting the business of a competitor". There is no evidence to suggest that the Respondent is a competitor of the Complainant. Accordingly, the Panel finds that the Respondent has not registered and used the Domain Name in bad faith as described within paragraph 4(b)(iii) of the Policy.

Additionally, the Panelist can find nothing to suggest that the Respondent registered or uses the Domain Name for commercial gain. Whilst the Panelist accepts that it is theoretically possible that the Respondent may obtain commercial benefit from the advertisement of logos and trademarks on the website to which users are redirected, namely "www.semo.com", the Respondent makes no submissions in this respect. Accordingly, on the evidence available, the Panelist finds that the Respondent has not registered or used the Domain Name in bad faith as described within paragraph 4(b)(iv) of the Policy.

However, paragraph 4(b) of the Policy is stated to be a non exhaustive list of examples of bad faith.

The Panel accepts the Complainantís submissions that, for the reasons stated in section 5, it is not possible for the Respondent to have been unaware of the Complainantís "MICROSOFT" brand and associated trademarks prior to registering the Domain Name. As a consequence the Panelist finds that in registering the Domain Name, the Respondent was aware of the Complainantís "MICROSOFT" brand and associated trademarks.

Given the above information, and in the absence of any contrary response from the Respondent, the Panelist can find no plausible circumstances in which the Respondent could legitimately use the Domain Name. Nor is it possible for the Panelist to "conceive a plausible situation in which the Respondent would have been unaware of this fact at the time of registration". (Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003)). Furthermore, the Domain Name in this case "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith" (Venuve Clicquot Pnsardin, Maison Fondée en 1772 v. The Polygenix Group Co. (WIPO Case No. D2000-0163).

Accordingly, on the fact available, the Panel concludes that the Domain Name was registered by the Respondent in bad faith.

In order for the Complainant to satisfy the provisions of paragraph 4(a)(iii) of the Policy, the Complainant must also show that the Domain Name is being used in bad faith. However, in accordance with Telstra Corporation Limited v. Nuclear Marshmallows the Panel acknowledges that "the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept".

Given the Respondentís lack of response to the Complainantís complaint together with the fact that Respondentís only response to the Complainantís claim appears to have been the minor amendments to the website described in section 5 above, the Panelist concludes that the Domain Name is being used in bad faith by the Respondent.

As a consequence the Panel finds that the Domain Name was registered and is being used in bad faith and the Complainant satisfies paragraph 4(a)(iii) of the Policy.

 

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 be transferred to the Complainant.

 


 

Antony Gold
Sole Panelist

Dated: March 29, 2004