WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. TheBuzz Int.

Case No. D2004-0124

 

1. The Parties

The Complainant is Microsoft Corporation, a regular, "for profit" corporation incorporated under the laws of the state of Washington. Its principal place of business is Redmond, Washington, in United States of America ("USA"). It is represented in these proceedings by Arnold & Porter LLP, Los Angeles, California, also in the USA.

The Respondent is "TheBuzz Int." of Over Spangen, Skive, Denmark. It is not clear whether "TheBuzz Int." is the name of a firm, company or other business entity.

 

2. The Domain Name and Registrar

The disputed domain name <microsoftcore.com> is registered with "directNIC," the domain registration arm of Intercosmos Media Group, Inc. ("directNIC").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2004. On February 18, 2004, the Center transmitted by email to directNIC a request for registrar verification in connection with the domain name at issue. On February 19, 2004, directNIC 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 Technical Contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 27, 2004. 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 February 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on March 23, 2004.

The Center appointed John Lambert as the sole panelist in this matter on March 29, 2004. The Panel finds that it is properly constituted. The Panel has submitted a 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 and its subsidiary and associate companies around the world are well known as suppliers of computer software and services. Their products include software for use on, or in connection with, the Internet. Their services include online delivery of still and moving images. Those services are delivered through several websites in English and other languages, including Danish, identified by universal resource locators ("URL") that include the word "microsoft."

The disputed domain name leads to a website called "MicroSoftCore." The Panel visited the home page of that website just after 09:00 BST on April 1, 2004. It displayed prominently a colour photograph of an almost naked young woman on a bed with her buttocks in the air against a blue background accompanied by the word "MicroSoftCore" in prominent white letters just above the womanís behind and the words "Members" and "Leave" in lightly smaller letters above her head. There was a bar menu at the top of the page with the choices "Preview," "Enter," "Join," "Information" and "MicrosSoftCore Home." Words disclaiming a connection with the Complainant to which the Panel shall refer later appeared below the photograph in small grey lettering. On clicking "Information" visitors were offered "Sexy Hot Porn Models" and "Exclusive Hardcore XXX Videos."

According to paragraph 12 of the Complaint, the Complainant first became aware of that site in or about October 2003.

 

5. Partiesí Contentions

A. Complainant

The Complainant claims the transfer of the disputed domain name on the ground that each and every one of the requirements for transfer established by paragraph 4(a) of the Policy (to which the Panel refers in paragraph 6 below) is satisfied.

As to the first requirement, the Complainant points to the registration of the sign "MICROSOFT" as a trade or service mark for various classes of goods and services in trade mark registries and patent offices around the world, the reputation and goodwill in respect of that name and mark throughout the world, and the obvious similarity between that name and mark and the disputed domain name.

As to the second requirement, it complains that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant adds that the Respondent is not commonly known by the disputed domain name and that he, she or it is not making legitimate non-commercial or fair use of that domain name.

For the third requirement, the Complainant relies on the absence of any credible explanation for the registration of the disputed domain name other than attracting traffic otherwise bound for the Complainantís sites.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the registrant have 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.

Each and every one of those elements has to be present.

A. Identical or Confusingly Similar

The first requirement is satisfied.

The Complainant has registered the word "MICROSOFT" on its own and in combination with other words as trade marks for various goods and services in the USA and many other countries around the world, including Denmark. Those registrations are listed in an exhibit to the Complaint marked "E." The Panel checked the entries in that exhibit in respect of the Community and Danish trade marks by making online searches through the OHIM and Danish Patent and Trademark Office websites and found those entries to be accurate.

The Panel also finds as a fact that the public in many countries around the world associate the word "MICROSOFT" with the Complainant and none other in respect of computer software, services and the internet. While the Panel reads the interesting articles from "Business Week" in exhibit F with interest, and considered the authorities to which the Complainant refers at paragraph 10 of the Complaint, the Panel would have made the same finding without that material. Anyone who has passed a computer retailer on any high street, traveled on the London or most other underground railways, read almost any mass circulation newspaper or simply listened to the wireless or watched commercial television at any time over the last 20 years cannot have failed to have notice advertisements for, or other references to, the Complainantís operating systems, browsers and integrated office packages. Many people will have run that software on personal computers at work, in schools, colleges or universities or in their homes.

It follows that the sign "MICROSOFT" is a trade mark in which the Complainant has rights in Denmark and many other countries around the world, under EC and national trade marks legislation and at common law.

The disputed domain name is not identical to that trademark in that it combines the word "MICROSOFT" with the noun "core." The question is therefore whether it is "confusingly similar."

The Panel concludes that the disputed domain name is "confusing similar" to the "MICROSOFT" mark. In reaching that conclusion the Panel has taken into account the worldwide reputation of the Complainant and its subsidiaries mentioned above. The panel has already found that the public around the world associate the word "MICROSOFT" with the Complainant in respect of computer software, services and the Internet. It must follow that the first thought of any intelligent and reasonably well-informed internet user would be that a domain name that includes the word "MICROSOFT" is likely to belong to, or be associated in some other way with, the Complainant.

Further, the noun "core" is used commonly in computing in several contexts, such as "core memory," "core dump" and "core competence." It would not be unreasonable for the putative user to surmise that a site called "microsoftcore" is a source of technical information on computing supplied by the Complainant or one of its subsidiary companies. On his home page the Respondent advises "Donít compare the name of this site to Microsoft, but, see it as Micro Soft Core." The Panel is prepared to agree the noun "core" combined with "soft" could suggest pornography, to a native English speaker at any rate. Had the domain name been "softcore" simpliciter or "softcore" combined with some other noun such as the surname "Christensen" the nature of the site would have been more readily apparent and confusion would have been unlikely. Because of the reputation and distinctiveness of the Complainantís mark, the notion that the disputed domain name is that of a website connected with the Complainant is what springs first to mind, displacing any impression that might otherwise have been created by the swords "soft" and "core" on their own.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has registered or applied to register the disputed domain name as a trademark anywhere in the world. It is certainly not registered as a Community or Danish trademark. There is no evidence that the disputed domain name was a "non-registered trade mark or another sign used in the course of trade" prior to the date of application for registration of the Complainantís Community and Danish trade marks but, even if it was, it is now too late for the Respondent to register such sign as a Community or Danish trade mark as the Respondent did not challenge the Complainantís registrations within 5 years. In the absence of any other material, it seems to me that the Complainant would have been entitled to bring proceedings against the Respondent for infringement of its Community trade mark under art 9(1)(c) of Council Regulation 40/94/EC and probably also the corresponding provision of the Danish trade marks legislation for infringement of its Danish registrations had it chosen. It follows that under Community and Danish trade mark law the Respondent has no rights or legitimate interests in the Complainantís mark.

However, that is not the end of the story because paragraph 4(a) of the Policy is not coextensive with national trade mark law, common law passing off or what is called in some countries unfair competition law. It is at least theoretically possible for a complaint to fail on the ground that a respondent has some right or interest within the meaning of paragraph 4(a)(ii) of the Policy even though that same ground would afford no defence to a claim for trade mark infringement. Paragraph 4(c) of the Policy lists some of the ways in which a registrant can demonstrate that he has rights to, and legitimate interests in, a disputed domain name. None of them avails the Respondent.

The first ground, "bona fide offering of goods or services," overlaps with the last probandum, namely "use in bad faith," which the Panel shall consider later.

As for the second ground, the Respondent does not suggest, and there is no evidence to lead me to suppose, that he, she or it is, or has been, commonly known by the disputed domain name.

The only ground mentioned in paragraph 4(c) of the Policy upon which the Respondent has made any attempt to demonstrate some sort of right or legitimate interest to the disputed domain name is the third, that is to say "legitimate non-commercial or fair use" of the name. The last sentence of the disclaimer mentioned above invites those who choose to compare the Respondentís site to the Complainant to "accept the fact that this site is merely satire and is targeted against a public company." If satire or criticism of the Complainant is the purpose of the site, or the intention of the Respondent, there is no sign of it on any page that is accessible without a password. Moreover, such an intention is belied by the first sentence of the disclaimer that denies any connection with the Complainant as well as by the second sentence that advises visitors not to compare the name of the site to the Complainant.

As the Complainant notes at paragraph 20 of the complaint, the circumstances provided by paragraph 4(c) are not exhaustive. There are no doubt many other circumstances in which a respondent could show rights or legitimate interests but, if there are in this case, they are no obvious from any of the materials before me. The Panel would add that paragraph 4(c) makes it clear that it is up to a respondent to demonstrate the existence of rights or legitimate interests. By failing to file anything in this case the Respondent has abandoned that opportunity.

The Panel therefore hold that the second requirement has been proved.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

The Panel reiterates finding that the public around the world associate the word "MICROSOFT" with the Complainant and no other. Consequently, any URL containing that word is likely to be associated with the Complainant. The obvious consequence of using such a domain name would be to attract traffic from the Complainant. As there is no explanation from the Respondent as to why he, she or it registered the disputed domain name the Panel finds that that must have been his, her or its intention.

It therefore follows that the domain name was registered and is now being used in bad faith.

 

7. Decision

Having found all the requirements of paragraph 4(a) of the Policy to have been satisfied, the Panel orders the disputed domain name to be transferred to the Complainant in accordance with paragraph 4(i) of the Policy and Rule 15 of the Rules.

 


 

John Lambert
Sole Panelist

Dated: April 8, 2004