WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. N.R. Vinod, VinSoft
Case No. D2004-0310
1. The Parties
The Complainant is Microsoft Corporation, C/O Peter Becker, Esq., One Microsoft Way, Redmond, Washington, of United States of America, represented by Law Offices of Martin B. Schwimmer, Esq., United States of America.
The Respondent is N.R. Vinod, VinSoft, Nanattil Kuzhikkattussery, Thrissur, Kerala, India.
2. The Domain Name and Registrar
The disputed domain name <microsoftindia.net> is registered with Direct Information Pvt Ltd. dba Directi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2004. On April 28, 2004, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On May 6, 2004, Direct Information Pvt Ltd. dba Directi.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, 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 May 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2004. The Response was filed with the Center on May 27, 2004. On June 3, 2004, Respondent filed an additional response with the Center via e-mail. This communication was however filed after the deadline for Response, and the Panel will therefore not accept or consider this communication.
The Center appointed Peter G. Nitter as the Sole Panelist in this matter on June 9, 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
Complainant manufactures, markets and sells computer software and related products and services, including products and services designed for use on the Internet, under its trademark MICROSOFT.
Complainant has registered the trademark MICROSOFT for a wide range of products and services throughout the world, including registrations in India.
In connection with the MICROSOFT mark, Complainant has established Internet websites located at domain names comprised of the MICROSOFT mark, including <microsoft.com> and <microsoft.net>.
Respondent has registered the disputed domain name, <microsoftindia.net>.
5. Parties’ Contentions
The domain name at issue is confusingly similar to Complainant’s trademark.
Courts and administrative panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark.
When he registered the Infringing Domain Name, Respondent purposefully selected a domain name that wholly incorporated the MICROSOFT mark. Moreover, according to previous panel decisions the addition of a generic descriptive term such as INDIA and the generic term “.net” to the protected MICROSOFT mark is insufficient to avoid confusion with the registered trademark. Previous panel decisions have also found that the addition of a generic word and hyphen does not detract from a finding of confusing similarity, and that the addition of the generic top-level domain name “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
Because Respondent’s domain name entirely incorporates Microsoft’s recognized mark with the mere, generic addition of “India” it is confusingly similar in appearance, sound, and commercial impression to the MICROSOFT mark.
Respondent has no rights or legitimate interest in the disputed 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. Respondent’s use is little more than the use of a famous trademark to divert traffic to competitors and to himself.
Prior to receiving Microsoft’s demand letter, Respondent was using the Domain Name to advertise the goods and services of competitors of Microsoft. Advertisements and information about competitors comprised over half of the homepage. In the context of this significant amount of commercial promotion of Microsoft’s competitors, the single link labeled “What is wrong with Microsoft” (which leads to third-party attacks on Complainant), is not legitimate non-commercial criticism. First, it is a link to a third-party site not maintained by Respondent. Importantly, on this page it is simply a competitive criticism with the intent of diverting traffic to Microsoft’s competitors.
The page is headed ‘MicrosoftIndia” without more, and of course the Domain Name is <microsoftindia.net>. The name and page heading do not truthfully or fairly describe the contents of the page, and thus cannot constitute a legitimate use of the Domain Name.
Respondent’s misappropriation of the <microsoftindia.com> domain name was no accident. Where a mark is distinctive, as in the instant case, it is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
Respondent has registered and used the disputed domain name in bad faith.
Respondent has registered the Infringing Domain Name in bad faith by doing so with knowledge of Complainant’s rights in the MICROSOFT mark and the obvious similarity between MICROSOFT and the <microsoftindia.net> domain name. It is simply inconceivable that Respondent was unaware of Microsoft’s rights in the MICROSOFT mark, which, as noted above, has achieved worldwide fame. Respondent’s use of Microsoft’s various other trademarks, such as OFFICE and WINDOWS puts his knowledge of Microsoft’s rights and the intentional nature of his acts beyond question.
Respondent’s bad faith use is evidenced by his initial use of the <microsoftindia.net> domain name in connection with his commercial website. This use was an obvious attempt to draw a connection with Microsoft. As such, Respondent registered and used the <microsoftindia.net> domain name in bad faith in order to attract Internet users to his website for commercial gain.
Utilization of a famous mark for advertising has been held to constitute bad faith in previous panel decisions.
Even if Respondent had not used the <microsoftindia.net> domain name to divert Internet users to an active website, his actions would still constitute registration and use in bad faith. Respondent must have expected that any use of the disputed domain name – which is confusingly similar to Microsoft’s own <microsoft.net> domain name – would cause harm to Microsoft. The disputed domain name wholly incorporates the MICROSOFT mark and is so obviously indicative of Microsoft’s products and services that Respondent’s use of this domain name would inevitably lead to confusion of some kind.
Respondent holds that he is using the disputed domain name for personal purposes, and not for any “unwanted matters.”
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to Complainant’s trademark, and the question is therefore whether there is a confusing similarity between the two.
Complainant’s trademark MICROSOFT is undoubtedly famous, and it is furthermore clear that it has become distinctive. The Panel finds it evident that Complainant’s trademark will be known to most users of the Internet worldwide.
The disputed domain name incorporates in its entirety Complainant’s famous and distinctive trademark MICROSOFT, and the mark is clearly the most distinctive part of the domain name at issue. The addition a geographical suffix to a trademark, such as the addition of “India” to MICROSOFT, is a common way of indicating subdivisions of global enterprises, or the geographical area that goods are offered under a trademark.
On this background, the Panel finds that a majority of the users of Internet immediately will recognise Complainant’s trademark, and assume that the domain name is connected to an Internet website owned, controlled or endorsed by Complainant.
The risk of such confusion has also been increased by Respondent’s use of the “Microsoft Windows” and “Microsoft Office” figurative marks on his website. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademark MICROSOFT.
Hence, Complainant has met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant has asserted that Respondent has no connection or affiliation with Complainant, and that Respondent has not received any express or implied license or consent to use the MICROSOFT trademark in the disputed domain name.
Respondent has not provided any evidence that any circumstances listed at paragraph 4(c) of the Policy apply to Respondent’s situation in order to refute Complainant’s assertions. In the event that Respondent would have any connection, affiliation or consent from Complainant, or any other of the circumstances listed at paragraph 4(c) of the Policy should apply to his registration and use of the disputed domain name, it would have been easy for Respondent to substantiate this.
In accordance with the above, Complainant has established prima facie that the Respondent has no rights or legitimate interests in the domain name.
Complainant has provided evidence that Respondent has directed the disputed domain name at issue to an Internet website advertising for products that are in direct competition with Complainant’s products. The Panel finds it inconceivable that Respondent would have any rights or legitimate interests in the use of a domain name that is confusingly similar to such a famous trademark in connection to the marketing of such competing products.
The Panel agrees that the criticism of Complainant posted on the website corresponding to the disputed domain name can not be deemed as legitimate non-commercial criticism, as it is simply a competitive criticism with the intent of diverting traffic to Microsoft’s competitors.
For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Complainant’s trademark MICROSOFT is famous and distinctive, and Respondent has used Complainant’s figurative trademarks on his website. The Panel therefore finds it evidenced that Respondent had knowledge of Complainant’s rights in the MICROSOFT trademark at the time of the registration of the disputed domain name.
The Panel accepts the Complainant’s assertion that the Respondent’s registration of the domain name incorporating in its entirety the trademark of the Complainant is an attempt to intentionally divert customers to its Internet website for financial gain.
After Respondent had been contacted by Complainant and informed that Complainant demanded transfer of the disputed domain name, the Respondent altered the content of the website corresponding to the disputed domain name so that it now only displays the word “welcome” together with Respondent’s e-mail address. In his Response, Respondent has held that he is only using the website for personal purposes, despite Complainant’s evidence that the website has been used for the marketing of products in competition with Complainant. In the view of the Panel, this is a further indication of bad faith.
The Panel thus finds that Respondent has registered and used the disputed domain name in bad faith.
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 <microsoftindia.net> be transferred to the Complainant.
Peter G. Nitter
Dated: June 23, 2004