WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Cedric Thompson
Case No. D2004-1097
1. The Parties
The Complainant is Microsoft Corporation, Redmond, Washington, United States of America, represented by Schwimmer and Associates, United States of America.
The Respondent is Cedric Thompson, High Falls, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <microsoftcares.com> is registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2004. On December 28, 2004, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On December 31, 2004, Schlund + Partner 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 February 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2005. The Respondent did not submit a response. Accordingly, the Center issued a notification of the Respondent’s default on February 23, 2005.
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 31, 2005. 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
Since 1975, the Complainant has manufactured, marketed and sold computer software and related products and services. Beginning as early as 1982, The United States Patent and Trademark Office has granted to the Complainant several United States trademark registrations for the “MICROSOFT” mark, for computers and in numerous other classes of goods and services (Complaint Exhibit 2--e.g., Registration No. 1,200,236 [July 6, 1982] and Registration No. 2,637,360 [October 15, 2002]).
The Respondent is listed as the registrant of the disputed domain name and the record of registration was created on August 5, 2004. The Respondent is not using the disputed domain name in connection with a web page other than as a holding page.
5. Parties’ Contentions
- The Complainant’s mark has become distinctive and well-known. The Complainant has developed such an enormous amount of goodwill in the mark that at least two reputable, internationally known magazines have recently stated that the mark is the second most valuable brand in the world (Complaint Exhibit 3).
- Previous UDRP Panels have recognized that the “MICROSOFT” mark is world famous.
- In connection with the “MICROSOFT” mark, the Complainant has established Internet websites located at various domain names comprised of the mark, including <microsoft.com> and <microsoft.net>.
- The Complainant has made common law use of the mark “MICROSOFT CARES” in connection with an employee program for the past ten years, giving rise to protectable rights for the Complainant in that mark.
- The domain name in dispute is confusingly similar to the Complainant’s “MICROSOFT” mark and is identical to its “MICROSOFT CARES” mark.
- The Respondent has no legitimate interest in the disputed domain name, has no connection or affiliation with the Complainant’s company and has not received any license or consent from the Complainant to use the mark “MICROSOFT” in a domain name or in any other manner.
- The Respondent does not appear to be utilizing the domain name in question in connection with a web page other than a hosting company-generated holding page.
- The Respondent has acted in bad faith in registering and using the domain name in dispute. Respondent was certainly aware of the Complainant’s mark due to its worldwide fame. The Respondent’s adoption of the exact, non-descriptive name of the Complainant’s employee program cannot be coincidental, but is simply indicative of bad faith. The Respondent appears to be preparing to use the disputed domain name for e-mail purposes, thereby increasing the likelihood of consumer confusion as to origination of messages.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraphs 4(a)(i), (ii) and (iii) of the Policy, the Complainant may succeed in this administrative proceeding and obtain ownership of the disputed domain name, <microsoftcares.com>, by proving the following:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and used by the Respondent in bad faith.
A. Identical or Confusingly Similar
As stated in paragraph 4 supra, the Complainant has provided evidence for the Panel to conclude as fact that the Complainant owns a valid registered United States trademarks in the name “Microsoft” (See Exhibit 2). The disputed domain name adds to this mark only the word “cares” used in its literal sense. This addition serves merely to modify slightly the dominant word in the name, the Complainant’s mark. Several previous panels under the Policy have held that the mere addition of a descriptive or generic word to a complainant’s validly registered mark is not sufficient to avoid a confusing similarity with that mark. See for example, Casio Keisanki Kobushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400 (July 15, 2003), and Microsoft Corporation v. MindKind, WIPO Case No. D2001-0193 (April 20, 2001). The Panel finds this reasoning to be persuasive in this case.
Since the Panel has concluded that the domain name at issue is confusingly similar to the Complainant’s registered trademark, it is not necessary for the Panel to consider whether the Complainant has sufficient common law rights in the name “Microsoft Cares”.
The Panel finds the Complainant has sustained its burden of showing, pursuant to paragraph 4(a)(i) of the Policy, that the disputed domain name is confusingly similar to a trademark to which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy places the burden on the Complainant to prove that the Respondent has no rights or legitimate interests in the domain name in dispute. However, the Panel realizes this can become a nearly impossible burden to sustain in a case like this, where there is a very thin record regarding the Respondent and his use or non-use of the name. In this case, where the Complainant has demonstrated valid rights to its mark and there is no record of any permission, license or authorization with respect to the Respondent’s use of the mark, the Panel believes that the burden effectively shifts to the Respondent to prove his rights or legitimate interest in the disputed domain name.
The Policy provides three specific ways that the Respondent might show his rights or legitimate interests under paragraph 4(c)(i-iii): (1) use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services, before notice of the dispute; (2) common knowledge of the Respondent’s identification with the disputed domain name, even in the absence of trademark or service mark rights; or (3) legitimate noncommercial or fair use of the disputed domain name, without intent to tarnish it or to receive commercial gain through misleading consumers. However, since the Respondent has chosen to provide no evidence in this case and the record indicates no other evidence in the Respondent’s favor on these issues, the Panel must conclude that the Respondent has failed to discharge its burden of proof to demonstrate that the Respondent’s has rights or legitimate interests in the disputed domain name.
In line with the reasoning above, the Panel concludes that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Several previous panels operating under the jurisdiction of the Policy have concluded that the Complainant’s MICROSOFT trademark is internationally famous. See for example, Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039 (December 19, 2002), and Microsoft Corporation v. Webbangladesh.Com, WIPO Case No. D2002-0769 (October 4, 2002). The Panel readily subscribes to these previous panels’ findings. Since the Respondent registered this domain name, it can be presumed that he has access to a computer. It is thus inconceivable to the Panel that he is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental.
While the Policy sets forth specific criteria for establishing bad faith in registration and use, the Panel is not limited to those criteria when considering bad faith on the part of the Respondent. There is a long line of previous cases decided in accordance with the Policy which establish that when the Complainant’s trademark is sufficiently famous, its inclusion in the disputed domain name cannot be considered coincidental even though actual use of the name by the Respondent is lacking. See for example, Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126 (November 22, 2000), and Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494 (July 25, 2000).
Accordingly, the Panel decides that the Complainant has proved that the 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, <microsoftcares.com>, be transferred to the Complainant.
Dennis A. Foster
Dated: April 14, 2005