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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Amit Mehrotra
Case No. D2000-0053
1. The Parties
Complainant is Microsoft Corporation, a Washington corporation with a principal place of business in Redmond, Washington, U.S.. Complainant is represented by Suzanne V. Wilson, Esq. and James S. Blackburn, Esq. of Blanc Williams Johnson & Kronstadt, LLP located at 1900 Avenue of the Stars, 17th Floor, Los Angeles, CA 90067-4403. Respondent is Mr. Amit Mehrotra, an individual located at 1374 West San Nicolas Drive, Tuscon, AZ 85704-2947. Mr. Mehrotra is the Administrative, Technical and Zone Contact for the domain name <microsoft.org>, whose registrant is "If you want this domain, please contact me."
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <microsoft.org>, which domain name is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 10, 2000. A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to Complainant (facsimile, e-mail and post/courier) and Respondent (facsimile, e-mail and post/courier), dated February 14, 2000.
On February 14, 2000, a Verification Response was received from the registrar, NSI which served to: (1) confirm that Network Solutions was in receipt of the Complaint submitted by Complainant; (2) confirm Network Solutions is the registrar of the domain name registration; (3) confirm that "If you want this domain, please contact me" is the current registrant of the MICROSOFT.ORG domain name registration; (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that Network Solutions’ 4.0 Service Agreement was in effect at the time of the original registration of the domain name; (6) confirm that the domain name MICROSOFT.ORG is in "Active" status.
The February 14, 2000, Verification Response from NSI confirmed by reply e-mail that the domain name <microsoft.org> is registered with NSI and that Respondent, "If you want this domain, please contact me," is the current registrant of that domain name. The Administrative, Technical, Zone and Billing Contact is listed as "Mehrotra, Am" which is presumed to be Mr. Amit Mehrotra, listed as Respondent herein.
NSI advised that the policy in effect at the time of the original registration of the domain name at issue provided that:
NETWORK SOLUTIONS, INC.
DOMAIN NAME REGISTRATION AGREEMENT
A. Introduction. This domain name registration agreement ("Registration Agreement") is submitted to NETWORK SOLUTIONS, INC. ("NSI") for the purpose of applying for and registering a domain name on the Internet. If this Registration Agreement is accepted by NSI, and a domain name is registered in NSI’s domain name database and assigned to the Registrant, Registrant ("Registration") agrees to be bound by the terms of this Registration Agreement and the terms of NSI’s Domain Name Dispute Policy ("Dispute Policy") which is incorporated herein by reference and made a part of this Registration Agreement. This Registration Agreement shall be accepted at the offices of NSI.
* * * * *
C. Dispute Policy. Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by NSI, that the Registrant shall be found by NSI’s current Dispute Policy. The current version of the Dispute Policy may be found at the InterNIC Registration Services web site: "http://www.netsol.com/rs/dispute-policy.html."
D. Dispute Policy Changes or Modifications. Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant’s maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrant’s continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database.
E. Disputes. Registrant agrees that, if the registration of its domain name is challenged by any third party, the Registrant will be subject to the provisions specified in the Dispute Policy.
* * * * *
Q. This is Domain Name Registration Agreement Version Number 4.0. This Registration Agreement is only for registrations under top-level domains: COM, ORG, NET, and EDU. By completing and submitting this Registration Agreement for consideration and acceptance by NSI, the Registrant agrees that he/she has read and agrees to be bound by A through D above.
Domain Version Number: 4.0 [URL ftp://rs.internic.net/templates/ domain-template.txt] [01/98]
A Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. This Panelist has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panelist were paid in the required amount by Complainant.
No formal deficiencies having been recorded, on February 14, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to Respondent (with copies to Complainant, NSI and ICANN), setting a deadline of March 5, 2000, by which Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to Respondent by e-mail to the e-mail address indicated in the Complaint and specified in NSI’s Response Verification. In addition, the Commencement Notification was sent by express courier and transmitted by facsimile to the addresses listed in the Complaint and confirmed by NSI. Having reviewed the communications records in the case file, this Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In addition, it appears that Respondent received actual notice, an e-mail from "‘Amit Mehrotra’ <firstname.lastname@example.org>" to Complainant dated February 13, 2000, acknowledges receipt of an e-mail with the Complaint shown as an attachment and "something via postal mail."
On March 7, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties by post/courier, facsimile and e-mail a Notification of Respondent Default. No Response or other document has been received by the WIPO Center or the Administrative Panel from Respondent since the Notification of Default.
On March 7, 2000, in view of Complainant’s designation of a single panelist, the WIPO Center invited Roderick Thompson to serve as a Panelist in Case No. D2000-0053, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Roderick Thompson’s Statement of Acceptance and Declaration of Impartiality and Independence, on March 10, 2000, the WIPO Center sent to the parties a Notification of Panelist Appointment, in which Roderick Thompson was formally appointed as the Sole Panelist. The Projected Decision Date as determined by the WIPO Center Transmission of Case file to Administrative Panel, transmitted to the parties on March 16, 2000, was March 30, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
Respondent has not made a formal Response to the Complaint. This Panelist, therefore, finds that Respondent received notice of the Complaint and failed to submit a Response as required by Rule 5. Respondent is, therefore, in default and, under Rule 14(a), this Panelist shall "proceed to a decision on the complaint." Accordingly, this Panelist shall proceed to a decision based on the allegations in the complaint and shall draw such inferences as are appropriate from the other documents submitted to WIPO.
4. Factual Background
The complainant has provided evidence of the registration of, amongst many other similar marks, the following mark:
1. Trademark; Service Mark – MICROSOFT, for computer programs and services. International classes 009 and 042.
Complaint, Exhibit D, page 70.
The trademark claims a first use of November 12, 1975. Id. Complainant uses these marks for MICROSOFT to provide products and services including computer operating systems, client/server applications, business and consumer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, computer input devices, online information and entertainment services, electronic commerce services, and computer publications. Complaint ¶ 9.
Respondent is the current registrant of the domain name <microsoft.org>. E-mail dated February 14, 2000, from NSI to the WIPO Center Case Administrator. The WHOIS database shows that Respondent is also the Administrative Contact, Technical Contact and Zone Contact for the domain name <microsoft.org>.
5. Parties’ Contentions
Complainant contends that; i) Microsoft is the exclusive owner of the trademark rights in the word "Microsoft"; ii) the current registrant of "microsoft.org" has no rights or legitimate interest in respect to the domain name; and iii) the current registrant has registered and used the domain name in bad faith. On information and belief, Complainant asserts that the official registrant of the domain name <microsoft.org> is Mr. Amit Mehrotra, who used the pseudonym "If you want this domain, please contact me" to register the domain name at issue. Since this assertion by Complainant is uncontested and there is nothing in the record suggesting otherwise, this Sole Panelist will operate under that assumption. By obtaining the domain name <microsoft.org>, Complainant alleges that Respondent registered the domain name for the purpose of selling or otherwise transferring the domain name registration to Microsoft or some other entity, and that this bad faith registration by Respondent is preventing Complainant from using this domain site for the purposes of furthering its own business interests.
Respondent has not contested the allegations of the Complaint and is in default.
6. Discussion and Findings
A. Applicable Rules and Principles of Law.
Paragraph 15(a) of the Rules instructs this Panelist as to the principles the Panelist is to use in rendering its decision: "A Panelist shall 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." Here, Complainant, Respondent, and the registrar are all domiciled in the United States. United States’ courts have recent experience with similar disputes. The Final Report of the WIPO Internet Domain Name Process (April 30, 1999 [http://ecommerce.wipo.int/domains/ process/ eng/processhome.html]) envisaged the very situation before this Panelist, stating "if the parties to the procedure were resident in one country, the domain was registered through a registrar in that country and the evidence of bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision-maker to refer to the law of the country concerned in applying the definition" of what became paragraph 4(a) of the Policy. Accordingly, this Panelist may look to rules and principles of law set out in decisions of the courts of the United States in determining whether the complainant has met its burden.
Paragraph 4(a) of the Policy directs that the complainant must prove each of the
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark in which the complainant has rights; and,
(ii) that the respondent has no legitimate interests in respect of the domain name; and,
(iii) the domain name has been registered and used in bad faith.
B. Application of Paragraph 4(a) to the Facts.
The domain name <microsoft.org> is nearly identical to the trademark registered and used by Complainant, MICROSOFT. The only difference between the <microsoft.org> domain name and the MICROSOFT trademark is the suffix ".ORG" an irrelevant distinction which does not change the likelihood for confusion. The suffix ".ORG" is meant to distinguish the domain name sites to which they attach as being non-profit organizations. In the same way, the suffix ".COM" is meant to distinguish commercial sites. Thus, as noted in an earlier Administrative Panel Decision, the "term ‘.COM’...means ‘commercial institution’ and is merely the classification of the purpose for which the domain name is being used." Digitronics Inventioneering Corporation v. @Six.Net Registered, Case No. D2000-0008, page 5. Applying the same logic here, the domain name <microsoft.org> is essentially identical to Complainant’s registered trademark for the purposes of this proceeding. As Complainant has submitted (1) multiple Certificates of Registration for the mark MICROSOFT, all registered with the U.S. Patent and Trademark Principal Register (Complaint, Exhibit D) and, (2) an NSI WHOIS database search showing Respondent as the <microsoft.org> domain name registrant (Complaint, Exhibit A), and given that the allegations of the Complaint are undisputed, Complainant has satisfied its burden under Paragraph 4 (a)(i).
It is uncontested that Respondent has no rights or legitimate interests in respect of the domain name, satisfying the requirement of Paragraph 4 (a)(ii). See Complaint, ¶ 14.
In regards to Paragraph 4(a)(iii) of the Policy, the Complaint alleges that "the name Respondent has chosen to list as the registrant...’If you want this domain name, please contact me’" for the disputed domain name is "clear evidence that Respondent has registered ‘microsoft.org’ for the purpose of selling or otherwise transferring the domain name registration to Microsoft or some other entity." Complaint, ¶ 17. This is uncontested evidence of bad faith registration under Paragraph 4(b) (i) of the Policy. The Complaint also alleges that "Respondent has registered other domain names that consist of other companies’ trademarks...in order to prevent the trademark owners from using them, and consumers from finding the owners’ corresponding websites." Complaint, ¶ 16; Exhibit E. This is also uncontested evidence of bad faith registration, but under Paragraph 4(b) (ii) of the Policy. Finally, the Complaint alleges that Respondent has undertaken a scheme to register "numerous domain names that are comprised of well-known trademarks with the intent...to misdirect computer users who are attempting to find the official websites associated with those trademarks and hijack them to other websites, including pornographic websites." Complaint, ¶ 15; Exhibit F. This, again, is uncontested evidence of bad faith registration under Paragraph 4(b) (iii) of the Policy. Evidence of either of these Paragraph 4(b) violations is sufficient for this Panelist to determine that a domain name was registered in bad faith. Here, Complainant has alleged three violations of the Policy, while Respondent has remained silent in defending against these accusations. This Sole Panelist must therefore infer from the allegations presented in the Complaint and the factual support attached therein that the accusations are true, and that Complainant has met the burden of proof required under the Policy to support Complainant’s allegations.
This Panelist therefore concludes that the circumstances presented in this default proceeding qualify as sufficient evidence of registration and use in bad faith within the meaning of Paragraph 4 of the Policy and all applicable legal principles.
For all of the foregoing reasons, this Panelist decides that the domain name registered by Respondent <microsoft.org> is identical or confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4i of the Policy, this Panelist requires that the registration of the domain name <microsoft.org> be transferred to Complainant.
Dated: April 10, 2000