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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Microsof.com aka Tarek Ahmed
Case No. D2000-0548
1. The Parties
The Complainant is Microsoft Corporation, a corporation organized in the State of Washington, United States of America (USA), with place of business in Redmond, Washington, USA.
The Respondent is microsof.com, also known as Tarek Ahmed, with address in Brooklyn, New York, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "microsof.com".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on June 3, 2000, and by courier mail received by WIPO on June 6, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On June 6, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. On June 14, 2000, WIPO completed its formal filing compliance requirements checklist.
b) On June 15, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. Notification was also transmitted via e-mail, telefax and courier mail to Respondent’s Technical Contact. Respondent subsequently transmitted an e-mail request to WIPO regarding the procedure for filing a response, and was advised to consult WIPO’s website for information.
c) On July 5, 2000, WIPO transmitted notification to Respondent (and its Technical Contact) of its default in responding to the complaint via e-mail, telefax and courier mail.
d) On July 6, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On July 6, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
e) On July 7, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by July 20, 2000. On July 7, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of a substantial number of trademark and service mark registrations on the Principal Register at the USPTO for "MICROSOFT" as a word mark, including No. 1200236, dated July 6, 1982, covering computer programs and computer programming services; No. 1252912, dated October 4, 1983, covering, inter alia, computer hardware and software manuals; No. 1259874, dated December 6, 1983, covering, inter alia, computer programs recorded on tapes and diskettes; No. 1684033, dated April 21, 1992, covering education and training services; No. 1966382, covering telecommunications services, and; No. 2163597, covering, inter alia, computers and component parts (Complaint, para. 10 and Exhibit D). These registrations are valid and subsisting. The "MICROSOFT" mark has been used in commerce since at least 1982 (based on the foregoing registrations), and continues to be used in commerce. The MICROSOFT mark has been widely advertised and is well known.
Complainant is the holder of a substantial number of trademark and service mark registrations on the Principal Register at the USPTO for "MICROSOFT-" formative marks, including "MICROSOFT WINDOWS", dated February 27, 1996, covering, inter alia, computers and components, and computer programs in the field of graphical applications; "MICROSOFT ACCESS", dated December 22, 1992, covering, inter alia, computer programs for use with databases; and "MICROSOFT WINDOWS NT", dated April 25, 1995, covering, inter alia, computer programs in the nature of operating system programs. These registrations are valid and subsisting, and are used in commerce.
Complainant has registered and is using the domain names "microsoft.com" and "microsoft.net" in connection with a website that promotes and offers its products for sale. (Complaint, para. 12 and Exhibit E). The "www.microsoft.com" website is identified on its homepage by the name "microsoft.com" (id.)
According to the registrar’s verification response to WIPO, dated June 8, 2000, "microsof.com" is the listed registrant of the domain name "MICROSOF.COM". The Administrative Contact is "Tarek, Ahmed". The addresses listed for the registrant and the Administrative Contact are identical. A Network Solutions’ WHOIS database search indicates that the record of registration was created on March 6, 2000, and that the record was last updated on March 27, 2000 (Complaint, Exhibit A).
A printout, dated May 18, 2000, of the web page identified by the address "www.microsof.com", includes a banner identifying it as the "microsof.com" homepage. The webpage prominently displays two Microsoft program box covers, between which is displayed a box cover for Red Hat Linux 6.1 Deluxe software. Beneath this display is a list of "Top Ten Microsoft Titles". Complainant indicates that in the creation of the title and description of its "microsof.com" homepage, Respondent copied the source code (title, description, keywords) from Complainant’s "microsoft.com" homepage, only omitting the "t". Complainant has provided printouts of the source code (or "html code") for the two home pages (Complaint, para. 13-14, 18, and Exhibits F and H), and these printouts indicate a substantial identity of the introductory elements of the source code for the two home pages. Respondent’s homepage states that "We offer a wide variety of software, hardware, and valuable services to help your business grow. For your added convenience, selected software is available for immediate download" (Complaint, Exhibit G).
By e-mail of May 16, 2000, Complainant requested that Respondent transfer the disputed domain name to it since Respondent’s name is confusingly similar to Complainant’s trademark and its website may create consumer confusion. Complainant offered "to reimburse you for the registration fees paid for the domain name." Complainant also requested that Respondent redesign its website "to remove any elements that might confuse Internet users into believe [sic] that your website is endorsed, authorized or sponsored by, or affiliated with, Microsoft Specifically, we request that all references to "microsof.com" be removed …" (E-mail from James Blackburn to email@example.com of May 16, 2000, Complaint, Exhibit I). Respondent’s e-mail reply stated:
"I understand your concern with how MY site is used, however the registration fees offer you make is quite humorous. I could easily have gone [sic] a wrong direction, such as promoting porn, however, I didn’t because I am a user and developer of Microsoft products. I am right now seeking funding for a development project that in conjunction with microsof.com will definitely enhance Micorsoft’s customer relations I have already raised substantial capital and am willing to talk in [sic] how I can partner with Microsoft, however I will say again that I am not interested in "reimbursement" of registration fees. I would like to add that we know how Microsoft public image is of late and I think as a Microsoft representative you should contact Microsoft and tell them my situation and return with a much better offer. (E-mail from Tarek Ahmed to James Blackburn, dated May 16, 2000, id.)"
The hardcopy file transmitted by WIPO to the Panel includes a printout from Respondent’s website ("www.microsof.com"), dated June 6, 2000. It is headed (upper left) in small print "Microsoft is trying to rob me." The body of the web page states in large block capital letters, "THIS IS NOT MICROSOFT.COM SITE. ALL I DID WAS SELL PRODUCTS AND SUPPORT MICROSOFT PRODUCTS. NOW THEY WANT TO TAKE AWAY MY DOMAIN NAME. WHAT HAPPENED TO FREE TRADE???????" This is followed in small print "If anyone can help me please send some information to …@hotmail.com"
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties’ Contentions
"A. Microsoft’s Ownership of the Microsoft Mark
- Microsoft is a well-known, worldwide provider of computer software and related products and services, including products for use on the Internet and for developing Internet software, and online services and information delivered via the Internet. Since its inception in 1975, Microsoft has created software for use in the workplace, home, and educational institutions.
- Microsoft’s products and services include 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.
- In connection with these goods and services, Microsoft owns, among other trademarks, the world famous trademark Microsoft (the ‘Microsoft Mark’). The United States Patent and Trademark Office has granted federal trademark registrations for the Microsoft Mark in numerous classes of goods and services, including, without limitation: computer programs; computer hardware; information services in the fields of entertainment, movies and sports; interactive electronic retailing and on-line ordering and information systems; restaurant and travel information and reservations; electronic mail services; and books and reference materials. Copies of a number of Microsoft’s federal trademark registrations for the Microsoft Mark are attached ….
11. Microsoft has spent an enormous amount of time, effort and money advertising and promoting the Microsoft Mark throughout the United States and the world. As a result, the Microsoft Mark has become famous worldwide, and Microsoft has developed an enormous amount of goodwill in the mark.
12 In connection with the Microsoft Mark, Microsoft has established an Internet website which can be reached through domain names comprised of the Microsoft Mark, including ‘microsoft.com’ and ‘microsoft.net’ (the ‘Microsoft Website’). The Microsoft Website allows computer users throughout the United States and the world to access information regarding Microsoft and its products and to use and enjoy the Internet services provided by Microsoft. The visual portion of the homepage of the Microsoft Website contains a light blue border at the top which identifies the website’s name ‘microsoft.com.’ The text of the page includes links to information about Microsoft and its products and links to websites where Microsoft products can be purchased. A copy of the homepage of the Microsoft Website is attached….
13 In addition to the visual portion of a website, every website contains ‘source code’ or ‘html code’ which is the code that determines what the visual portion of the site will look like. The html code for a webpage also may contain non-visual aspects, including its title, description and keywords which are used by some search engines to determine whether a particular webpage is relevant to an Internet user’s search engine query. The html title, description and/or keywords also may be seen by an Internet user when they are displayed on a search engine’s results ranking page listing the particular webpage. Finally, the html title of the webpage may appear in the Internet user’s browser when the page is displayed or when it is printed. The content of the html code is determined by the website owner and developer.
14 The html code for home page of the Microsoft Website includes the title ‘Welcome to Microsoft’s Homepage’ and the following description: The entry page to Microsoft’s Website. Find software, solutions and answers. Support, and Microsoft news.
The ‘keywords’ in the html code for the Microsoft Website are: ‘products; headlines; downloads; news; Web site; what’s new; solutions; services; software; contests; corporate news.’ A copy of the source code for the home page of the Microsoft website is attached….
B. Respondent Has No Legitimate Interest in the Domain Name ‘microsof.com’
15 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 is not an authorized dealer or reseller of Microsoft products or services. Moreover, Microsoft is unaware of any legitimate right Respondent could have in the word ‘microsof,’ which is confusingly similar to its own famous trademark. Thus, Respondent has no legitimate interest in ‘microsof.com’ and has made no good faith or fair use of the domain name ‘microsof.com.’
C. Respondent Has Registered and Used ‘microsof.com’ in Bad Faith
16 Respondent registered ‘microsof.com’ because it is comprised of the world-famous Microsoft trademark, with the intent either to sell this domain name to Microsoft, or to misdirect computer users who are attempting to find the official Microsoft Websites associated with this trademark and hijack them to respondent’s own website.
17 First, Respondent used ‘microsof.com’ to divert Internet users seeking an official Microsoft website to his website. Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or mark. See Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) (‘A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name.’ . . . ‘[A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.’) Respondent has attempted to take advantage of, for his own commercial advantage, the Internet user behavior pattern identified in Panavision. It is very likely that many Internet users seeking to locate the official Microsoft website on the Internet will type ‘microsoft.com’ into their Internet browsers. As noted above, these Internet users will have correctly identified the location of the Microsoft Website. However, a certain proportion of these users undoubtedly will misspell ‘Microsoft’ or make a typographical error while typing ‘Microsoft’ into their Internet browsers by inadvertently omitting the ‘t’ -- the last letter -- from the Microsoft mark. Thus, some Internet users seeking to find ‘microsoft.com’ will mistakenly arrive at Respondent’s website at ‘microsof.com.’ As described more fully below, these individuals will not know why they did not reach the official Microsoft website and a significant number will be confused into believing that Respondent’s website is the official Microsoft Website.
18 Second, rather than dispel any confusion, the visual content of and html code for Respondent’s website at ‘microsof.com’ has been deliberately designed to create consumer confusion. Courts have recognized that the use of a domain name confusingly similar to another’s trademark and/or the inclusion of another’s trademark in the metatags for a website can constitute trademark infringement and violate Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and other federal and state laws. See Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). As set forth above, on its websites, Microsoft offers its computer software products for sale. Internet users who accidentally arrive at Respondent’s website by mistakenly omitting the ‘t’ from ‘microsoft.com’ will see the homepage for ‘microsof.com.’ The visual portion of the homepage of ‘microsof.com’ has a blue border at the top with the title ‘microsof.com’ and includes pictures and descriptions of official Microsoft products. Thus, Internet users who see the Microsoft products on respondent’s website are likely to remain confused regarding whether they have reached an official Microsoft website. Also, even if the Internet user realizes that he or she is not at the official Microsoft website, because ‘microsof.com’ offers Microsoft software products and services, these users are likely to be confused regarding Microsoft’s affiliation with, connection or sponsorship of ‘microsof.com,’ or patronize Respondent’s website instead of an official Microsoft website. A copy of the printout from the homepage of the ‘microsof.com’ web page is attached….
19 The non-visual portions of the html code for Respondent’s website also is designed to create confusion between ‘microsof.com’ and the Microsoft website. In fact, a comparison for the html code for the two websites reveals that Respondent has simply copied the title, description and keywords from the Microsoft Website into the ‘microsof.com’ site except that he has omitted the final letter -- ‘t’ -- from the word ‘microsoft’ wherever it appears. For example, html title of Respondent’s website is ‘Welcome to Microsof’s Homepage.’ The html description of the ‘microsof.com’ site is:
The entry page to Microsof’s Web site. Find software, solutions and answers. Support, and Microsof news.
Finally, the html keywords used by Respondent are copied from the Microsoft Website. A copy of the html code for the ‘microsof.com’ website is attached….
20 Moreover, respondent’s ‘microsof.com’ website is offering for sale non-Microsoft and competing products and services. By doing so, Respondent is creating a likelihood that consumers will be confused regarding Microsoft’s affiliation or connection with, or sponsorship or endorsement of those products. For example, Respondent’s website offers for sale products created by Microsoft’s competitors, including, for example, ‘Red Hat Linux 6.1.’ See Exhibit …. Because these products are being sold side-by-side with Microsoft products, on a website located at the domain name ‘microsof.com,’ consumers may believe that there is a connection between Microsoft and Red Hat Linux when, in fact, none exists.
21 As mentioned above, ‘microsof’ is a common typographical misspelling of ‘Microsoft.’ Respondent has registered and used this typographical misspelling of the Microsoft Marks to divert Internet traffic for his own commercial advantage. By prominently displaying Microsoft products on the first page of the ‘microsof.com’ website, Respondent is further confusing Internet users into believing that they have reached an official Microsoft site. Alternatively, even if Internet users realize that they have not arrived at an official Microsoft site, to the extent they were seeking products and services available through Respondent’s website, they may decide to patronize Respondent’s website instead of continuing their search for an official Microsoft website.
22 Finally, Respondent has used the domain name ‘microsof.com’ in bad faith by offering to sell it to Microsoft. On May 16, 2000, Microsoft’s counsel sent an email letter to Respondent concerning Respondent’s bad-faith registration and use of the ‘microsof.com’ domain name, and requesting that Respondent voluntarily agree to transfer the domain name to Microsoft. Respondent replied by email later that day. A copy of the email letter and response is attached…. In his response, Respondent made a bald-faced threat to take further action to harm Microsoft, such as by redirecting the domain name to a pornographic website, and demanded that Microsoft make him a ‘much better offer’ for transfer of the domain name to Microsoft:
I understand your concern with how MY site is used, however the registration fees offer you make is quite humorous. I could easily have gone a wrong direction, such as promoting porn, however, I didn’t because I am a user and developer of Microsoft products.
[. . . .] I would like to add that we know how Microsoft public image is of late and I think as a Microsoft representative you should contact Microsoft and tell them my situation and return with a much better offer. [Emphasis added].
Respondent’s thinly veiled threat to use the domain name to further damage Microsoft if it does not pay him a substantial sum for transfer of the domain name is a clear case of bad-faith use of the domain name.
MICROSOFT’S ATTEMPT TO RESOLVE THIS DISPUTE INFORMALLY
23 As set forth above, Microsoft’s counsel has attempted to resolve this
matter informally with Respondent by requesting that Respondent voluntarily agree to transfer the domain name to Microsoft. Respondent rejected Microsoft’s offer." (Complaint)
Complainant requests that the Panel ask the Registrar to transfer the domain name "microsof.com" from Respondent to it (id., para. 24).
Respondent did not formally reply to the complaint. However, subsequent to the filing of the complaint, Respondent’s website posted a message asserting that Respondent’s sole action was to "sell products and support Microsoft products". In view of the inclusion of this message in the case file, the Panel will treat it as Respondent’s assertion of a legitimate interest in use of the disputed domain name for the purpose of offering and selling software products over the Internet, including those of Complainant and other parties.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond
(see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. Respondent acknowledged receipt of the complaint and initiation of these proceedings by its e-mail message to WIPO (see Procedural History, supra).
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., para. 15(a)).
Complainant is the holder of trademark and service mark registrations for the term "MICROSOFT" and for several "MICROSOFT"-formative marks, including "MICROSOFT ACCESS", "MICROSOFT WINDOWS" and MICROSOFT WINDOWS NT", in the United States and is using those marks in commerce (see Factual Background, supra). Complainant’s registration of the "MICROSOFT" marks on the Principal Register at the PTO establishes a presumption of their validity in U.S. law 2. The Panel determines that Complainant has rights in the trademarks "MICROSOFT", "MICROSOFT ACCESS", "MICROSOFT WINDOWS" and "MICROSOFT WINDOWS NT". Based on the July 6, 1982, date of Complainant’s registration of the trademark "MICROSOFT" (the earliest of those submitted in this proceeding by Complainant), and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant’s rights in the trademark arose prior to Respondent’s registration, on March 6, 2000, of the disputed domain name "microsof.com" 3.
Complainant’s "MICROSOFT" mark is well known throughout the world.
Complainant has registered and uses the domain name "microsoft.com", inter alia, to advertise, sell, and provide customer support for its products. Complainant’s principal website is identified by a banner as "microsoft.com".
Respondent has registered the domain name "microsof.com". This name is identical to Complainant’s trademark "Microsoft", except that (1) the domain name adds the generic top-level domain name ".com", (2) the domain name employs lower case letters, while the trademark is generally used with an initial capital letter, and (3) the domain name omits the letter "t" at the end of the mark.
The addition of the generic top-level domain name (gTLD) ".com" is without legal significance from the standpoint of comparing "microsof.com" to "Microsoft" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services 4. Insofar as domain names are not case sensitive, the Panel concludes that use of the lower case letter format in "microsof.com" is without legal significance from the standpoint of comparing that name to "Microsoft" 5.
The term "microsof" is very similar to "microsoft" in its visual impression. Pronunciation of the two terms is very similar. An Internet user or consumer viewing the term "microsof" (or "microsof.com") is likely to confuse it with the term "microsoft" (or "microsoft.com"). Complainant’s mark "Microsoft" is undoubtedly strong – it is immediately recognizable by the public – and this factor contributes to the likelihood of confusion 6. The Panel determines that the disputed domain name "microsof.com" is confusingly similar to "Microsoft" in the sense of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, para. 4(c)).
There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made noncommercial or fair use of the name. It appears from the record, however, that Respondent has offered to sell goods and provide services on a website identified by the "microsof.com" domain name.
By using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services. Respondent’s goods may (or may not) be genuine, but consumers have a right to purchase goods and services from the seller of their own choosing. Respondent offered to sell goods and services under a domain name confusingly similar to Complainant’s mark. That domain name directed Internet users to a website designed to perpetuate confusion – to suggest to consumers that they were purchasing goods and services directly from Complainant. This was not a bona fide offering of goods and services by Respondent.
Respondent adopted one of the world’s best-known trademarks and service marks as its domain name (omitting one letter). In establishing its website, Respondent appears to have used the literal source code of Complainant’s website. Respondent was undoubtedly aware of Complainant’s interest in its mark, including its use as the principal identifier for Complainant’s own website. Respondent designed its website to convey the visual impression of Complainant’s website.
On the record of this proceeding, Respondent did not undertake a bona fide offering for sale of goods or services before notice of the dispute Respondent offered its products and services under the false pretense of being Complainant.
Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent has registered a domain name that Internet users are likely to employ inadvertently as they misspell Complainant’s domain name when attempting to locate Complainant’s website. Respondent’s choice of a misspelled version of Complainant’s domain name was deliberate, as evidenced, inter alia, by its use of Complainant’s homepage source code for significant parts of its own website, altering only a single letter in Complainant’s name. Respondent created a website homepage that is substantially similar to Complainant’s, and that is likely to confuse consumers as to the sponsorship of Respondent’s web site. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name "microsof.com" to the Complainant.
Based on its finding that the Respondent, microsof.com, also known as Tarek Ahmed, has engaged in abusive registration of the domain name "microsof.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "microsof.com" be transferred to the Complainant, Microsoft Corporation.
Frederick M. Abbott
Dated: July 21, 2000
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
3. For purposes of deciding this proceeding, the Panel need not further consider the legal significance of Complainant’s "Microsoft"-formative marks.
4. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
5. See Brookfield, id.,174 F.3d 1036, 1055 (9th Cir. 1999).
6. See Brookfield, id., 174 F.3d 1036, 1053-61 (9th Cir. 1999), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).