Microsoft Corporation v. OzGrid Business
Applications
Claim
Number: FA0408000314308
Complainant is Microsoft Corporation (“Complainant”),
represented by Martin B. Schwimmer, of Schwimmer and Associates,
7 Bayberry Drive, Mt. Pleasant, NY 10570. Respondent is ozGrid Business Applications (“Respondent”), 20 Challenger Rise,
Austrialind, WA 6233, Australia.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <microsoftexceltraining.com>, registered
with Tucows Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 18, 2004; the Forum received a hard copy of the
Complaint on August 20, 2004.
On
August 19, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <microsoftexceltraining.com> is registered with Tucows Inc.
and that Respondent is the current registrant of the name. Tucows Inc. has
verified that Respondent is bound by the Tucows Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
August 26, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 15, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@microsoftexceltraining.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 22, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the "Panel")
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the
"Rules") "to employ reasonably available means calculated to
achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <microsoftexceltraining.com>
domain name is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or
legitimate interests in the <microsoftexceltraining.com> domain
name.
3. Respondent registered and used the <microsoftexceltraining.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Microsoft Corporation, manufactures, markets and sells computer software and
related products and services, including products and services designed for use
on the Internet. Complainant has created software and developed services for
use in education, the workplace, and the home since 1975.
Complainant owns
numerous trademark registrations for the MICROSOFT mark (e.g. Reg. No.
1,715,749, issued Sept. 15, 1992; Reg. No. 2,198,154, issued Oct. 20, 1998;
Reg. No. 2,285,870, issued Oct. 12, 1999; Reg. No, 2,337,072, issued Apr. 4,
2000 and Reg. No. 2,637,360, issued Oct. 15, 2002) with the United States
Patent and Trademark Office (“USPTO”) for computer operating systems, server
applications, software programming tools, media programs, Internet development
tools, online information and entertainment, computer input devices, electronic
commerce services and computer publications, etc. Complainant has also obtained
registrations for the MICROSOFT mark throughout the world, including Australia.
Complainant has
a pending trademark application for the EXCEL mark (Serial. No. 78,400,429,
filing date Apr. 12, 2004). Complainant offers goods and services under the
EXCEL and MICROSOFT EXCEL marks, primarily in connection with an electronic
spreadsheet program. The MIRCROSOFT EXCEL program has been sold both as a stand
alone product and as part of the MICROSOFT OFFICE program suite since 1985. In
the last four years Complainant has licensed approximately 41 million copies of
the EXCEL product. Complainant also offers training services, in the form of
courses, workshops, clinics, and seminars, including training for its EXCEL
program.
Complainant has
spent substantial time, effort, and money advertising and promoting the
MICROSOFT mark throughout the world. Consequently, Complainant’s MICROSOFT mark
has become distinctive, well-known and has developed considerable goodwill.
Complainant
operates its main websites at the <microsoft.com> and
<microsoft.net> domain names, where computer users can access information
regarding Complainant’s products, services, and use Internet services provided
by Complainant.
Respondent
registered the disputed domain name on July 17, 2001 and is using the domain name to divert Internet traffic to
Respondent’s <ozGrid.com> website that provides unauthorized EXCEL
training services and offers to sell software, software templates, consulting
services and publications.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established that it has rights in the MICROSOFT mark through registration with
the USPTO and through the use of its mark in commerce for the last twenty-nine
years. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive.
Respondent has the burden of refuting this assumption.
Respondent’s <microsoftexceltraining.com>
domain name is confusingly similar to Complainant’s MICROSOFT mark because
the domain name incorporates Complainant’s mark in its entirety and only
deviates with the addition of the descriptive terms “excel training,” and the
generic top-level domain “.com.” The mere addition of descriptive terms and a
generic top-level domain name does not negate the confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online
Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) finding that
Respondent’s domain names, which incorporated
Complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any distinctive
features capable of overcoming a claim of confusing similarity; see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity; see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level
of the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar.
Furthermore, the
Panel may find that the confusing similarity of Complainant’s mark and
Respondent’s domain name is heightened because both Respondent and Complainant
are in the same industry, i.e. the provision of training programs for the EXCEL
program. See Slep-Tone
Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum
Mar. 13, 2000) (“likelihood of confusion is further increased by the fact that
the Respondent and [Complainant] operate within the same industry”); see also Vivid Video, Inc. v. Tennaro,
FA 126646 (Nat. Arb. Forum Nov. 14, 2002) finding that any distinctiveness
resulting from Respondent’s addition of a generic word to Complainant’s mark in
a domain name is less significant because Respondent and Complainant operate in
the same industry.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the <microsoftexceltraining.com> domain name to divert
Internet traffic intended for Complainant to Respondent’s <ozGrid.com>
website that provides unauthorized MICROSOFT EXCEL training services and offers
to sell software, software templates, consulting services and publications, many
of which have no connection to Complainant’s EXCEL products. Respondent’s use
of a domain name confusingly similar to Complainant’s MICROSOFT mark to
redirect Internet users interested in Complainant’s services and products to a
commercial website that offers unauthorized MICROSOFT EXCEL training services
and products as well as offers to sell software, software templates, consulting
services and publications is not a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users to an unrelated business was not a
bona fide offering of goods or services; see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting Internet
traffic to its own website; see also
Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) finding
no “bona fide” offering of goods or services where Respondent used
Complainant’s mark without authorization to attract Internet users to its
website, which offered both Complainant’s products and those of Complainant’s
competitors; see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) finding no rights or legitimate interests
in a domain name that diverted Internet users to Respondent’s competing website
through the use of Complainant’s mark.
Moreover,
Respondent has offered no evidence and there is no proof in the record suggesting
that Respondent is commonly known by the <microsoftexceltraining.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark; see also RMO, Inc. v. Burbidge,
FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail".
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <microsoftexceltrainting.com> domain name for its
own commercial gain. Respondent’s domain name diverts Internet users wishing to
search under Complainant’s MICROSOFT mark to Respondent’s commercial website,
where Respondent offers unauthorized MICROSOFT EXCEL training services and
offers to sell software, software templates, consulting services and
publications. Respondent’s practice of diversion, motivated by commercial gain,
through the use of a confusingly similar domain name is evidence of bad faith
registration and use pursuant to Policy ¶ (b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website; see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website; see
also Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) finding bad faith where
the domain name in question is obviously connected with Complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain; see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) finding that Respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with Complainant’s mark and offering the same chat services via his
website as Complainant.
Furthermore,
Respondent registered the <microsoftexceltraining.com> domain name
for the primary purpose of disrupting Complainant’s business by redirecting
Internet traffic intended for Complainant to Respondent’s website, which
directly competes with Complainant by offering Complainant’s products and
services as well as products and services from Complainant’s competitors.
Registration and use of a domain name for the primary purpose of disrupting the
business of a competitor is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) finding that, given the competitive relationship
between Complainant and Respondent, Respondent likely registered the contested
domain name with the intent to disrupt Complainant's business and create user
confusion; see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area; see
also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business; see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
transferring the <fossilwatch.com> domain name from Respondent, a watch
dealer not otherwise authorized to sell Complainant’s goods, to Complainant.
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <microsoftexceltraining.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
October 6, 2004
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