national arbitration forum

 

DECISION

 

Microsoft Corporation v. Mark Wilson

Claim Number:  FA0605000703096

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225.  Respondent is Mark Wilson (“Respondent”), PO Box 99800, EmeryVille, CA 94662.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <microsofft.org>, registered with Melbourne IT, Ltd.

 

PANEL

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 11, 2006.

 

On May 10, 2006, Melbourne IT, Ltd. confirmed by e-mail to the National Arbitration Forum that the <microsofft.org> domain name is registered with Melbourne IT, Ltd. and that Respondent is the current registrant of the name.  Melbourne IT, Ltd. has verified that Respondent is bound by the Melbourne IT, Ltd. 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 May 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 6, 2006 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@microsofft.org by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant has manufactured and sold computer software and related products and services since 1975. 

 

Complainant has widely used its MICROSOFT mark over the same period, and holds over thirty trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MICROSOFT mark, dating from 1983. 

 

Complainant also holds over 500 trademarks and service mark applications and registrations for the MICROSOFT mark worldwide.

 

Respondent is not authorized to use Complainant’s mark and Respondent is not associated with Complainant in any way.    

 

Respondent registered the <microsofft.org> domain name on April 3, 2006. 

 

Respondent’s domain name has resolved to a website that uses Complainant’s logos to attempt to convince Internet users that it is Complainant’s website. 

 

The same website has advised Internet users that they must either pay an eighty-nine dollar fee or purchase a product from a third-party via links on the website in order to continue to use Complainant’s Internet Explorer program. 

 

The website was recently altered and now resolves to another, unrelated website.   

 

Respondent’s <microsofft.org> domain name is confusingly similar to Complainant’s MICROSOFT mark.

 

Respondent does not have any rights or legitimate interests in the <microsofft.org> domain name.

 

Respondent registered and uses the <microsofft.org> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a trademark 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 was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

 

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:

 

i.   the domain name registered by Respondent is identical or confusingly similar to a

     trademark or service mark in which Complainant has rights; and

ii.  Respondent has 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.

 

Identical and/or Confusingly Similar

 

Complainant’s federal trademark registrations with the USPTO and internationally, establish Complainant’s rights in the MICROSOFT mark.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”  We proceed then to consider the related question of identity-confusing similarity as between the mark and the competing domain name.

 

Respondent’s <microsofft.org> domain name is confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i).  Respondent has merely added a letter “f” to Complainant’s MICROSOFT mark.  In Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), the panel found that by misspelling words and adding letters to words, a respondent did not create a distinct mark but rather rendered the domain name confusingly similar to a complainant’s marks.  See also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a tendency to be confusingly similar to the trademark where the mark is highly distinctive).  Furthermore, the addition of the generic top-level domain name “.org” is insufficient to negate the confusingly similar character of Respondent’s domain name.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):

 

The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.

 

See also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):

 

It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy. 

 

Because Respondent’s <microsofft.org> domain name is confusingly similar to Complainant’s mark, the Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights or legitimate interests in the <microsofft.org> domain name.  Complainant must initially establish that Respondent lacks any rights or legitimate interests with respect to the disputed domain name.  However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):

 

Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.

 

Complainant asserts that Respondent is not authorized to use Complainant’s mark and that Respondent is not associated with Complainant in any way.  Respondent does not deny these allegations.  The Panel is thus free to conclude, without more, that Respondent has no rights or interests in the disputed domain name which are or might be recognizable under the Policy.  However, the Panel will nonetheless examine the record to determine if any evidence exists to support the proposition that Respondent may have rights or legitimate interests under Policy ¶ 4(c). 

 

Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name.  In Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003), the panel found that, given the WHOIS contact information for the disputed domain name, it could be inferred that a respondent was not commonly known by the name ‘welsfargo’ in any derivation.  Furthermore, there is no other evidence in the record of this proceeding to suggest that Respondent has ever been known by the disputed domain name.  See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that, without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark there in evidence and never applied for a license or permission from a complainant to use the trademarked name).  Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 

 

The Panel further finds that Respondent’s use of Complainant’s mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), as it is merely a “typosquatted” variation of Complainant’s MICROSOFT mark.  See Encyclopedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of a complainant's mark); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the domain names <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> were intentional misspellings of a complainant's LTD COMMODITIES mark and that such “‘typosquatting’ is evidence that a respondent lacks rights or legitimate interests in the disputed domain names.

 

The Panel also concludes that Respondent is intentionally misleading the public as to the source of the <microsofft.org> domain name and is doing so for Respondent’s commercial gain.  In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that a respondent attempted to pass itself off online as a complainant, and that such action was blatant unauthorized use of the complainant’s mark and evidence that the respondent had no rights or legitimate interests in the disputed domain name.  See also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003):

 

It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . . 

 

The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent acted in bad faith by registering and using the <microsofft.org> domain name as described in the Complaint.  The Panel finds from the uncontested facts alleged that the Respondent is attempting to confuse Internet users as to the source and authority of the site.  See 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 a complainant’s well-known marks, thus creating a likelihood of confusion for commercial gain).

 

The Panel also finds that Respondent, acting in bad faith, has held itself out to be a source of Complainant’s goods by advising Internet users that their use of Complainant’s product must be renewed.  Cf. Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).  Despite the recent alteration to the Respondent’s website redirecting Internet users to an unrelated site, the Panel finds that there remains a likelihood of confusion regarding the appearance of Complainant’s endorsement of the offending site. This suffices as evidence of bad faith registration and use under Policy ¶ 4(b)(iv). 

 

Moreover, the Panel concludes that the Respondent’s registration of a typosquatted domain name is itself evidence of bad faith registration and use of the disputed domain name.  See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):

 

Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith. 

 

See also Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net, D2003-0232 (WIPO May 22, 2003), where a panel found that a respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location through the respondent’s persistent practice of typosquatting. 

 

Finally under this heading, it appears that Respondent registered the contested domain name with either actual or constructive knowledge of Complainant’s rights in the MICROSOFT mark by virtue of Complainant’s prior registration of that mark with the pertinent national authorities worldwide.  Registration and use of a confusingly similar domain name despite such actual or constructive knowledge evidences bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).

 

For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.  

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <microsofft.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  June 21, 2006

 

 

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