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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Cupcake City

Case No. D2000-0818

 

1. The Parties

Complainant is Microsoft Corporation ("Microsoft"), a corporation incorporated under the laws of the State of Washington, with a principal place of business located at One Microsoft Way, Redmond, Washington 98502 USA

Respondent is Cupcake City a.k.a. Cupcake-Party, 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania 19020 USA.

 

2. The Domain Names and Registrar

The domain names at issue are "msninstantmessenger.com", "microsoftmessenger.com" and "msnmessenger.com" (the "Domain Names"). The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.

 

3. Procedural History

On July 19, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On July 21, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On July 29, 2000, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On July 26, 2000, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On July 31, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On September 13, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On October 2, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

Microsoft is a well-known, worldwide provider of computer software and related products and services. Microsoft is also a leading provider of Internet-related products and services, including products designed for use on the Internet and for developing Internet software and applications, many of which are distributed under the famous MICROSOFT mark. Microsoft also provides Internet services of its own, including its popular Internet portal sites operated under the famous trademark MSN. The website "www.msn.com" is among the top three most widely used portal sites in the world. In addition to "www.msn.com", Microsoft also operates localized portal sites under the MSN brand in various countries, under their respective country code top-level domains.

Microsoft offers a variety of Internet services within its MSN portal sites, including a search engine, email (under the trademark HOTMAIL), and instant messaging (at "www.messenger.msn.com"). The instant messaging service, known as MSN Messenger Service, allows the user to have group conversations via email with others who are online at the same time. Unlike traditional email, which deposits messages into an electronic mailbox for later retrieval, instant messaging allows persons who are online at the same time to seamlessly engage in an online conversation, somewhat akin to that which goes on in a chatroom site. The MSN Messenger Service has proven to be a very popular offering among consumers.

Microsoft has obtained several trademark registrations in the U.S. and elsewhere for the MICROSOFT mark in numerous classes of goods and services, including registrations for use in connection with: (1) providing telecommunication services, namely, the receipt and delivery of messages, documents, images, and other data by electronic transmission; (2) electronic mail services; (3) providing bulletin board services and chat services by means of global communication networks; and (4) providing information in the fields of business and commerce over computer networks and global communications networks.

Microsoft has also obtained several trademark registrations in the U.S. and elsewhere for the MSN mark in numerous classes of goods and services, including registrations for use in connection with: (1) providing telecommunication services, namely, the receipt and delivery of messages, documents, images, and other data by electronic transmission and electronic mail services; (2) computer programs for transmitting and receiving electronic mail, text, graphics, audio, video, and other data from a remote computer network, and for accessing global communications networks; and (3) providing information in the fields of business and commerce over computer networks and global communications networks.

Microsoft has spent substantial time, effort, and money advertising and promoting the MICROSOFT and MSN marks throughout the United States and the world. As a result, the MICROSOFT and MSN marks have become world famous, and Microsoft has developed significant goodwill in the marks.

Respondent registered the Domain Names on July 22, 1999, after the registration of the MICROSOFT and MSN trademarks.

Entry of the Domain Names pulls up Microsoft’s MSN Messenger Service site (described in more detail below) as well as a second website titled "Friendfinder," which appears in a slightly smaller frame in front of Microsoft’s site. "Friendfinder" purports to offer a meeting / chat service to its members. Although triggered by typing of the address for any one of the Domain Names, the Friendfinder site bears the domain name address "www.cupcakeparty.com". The Friendfinder site obscures virtually all of Microsoft’s site such that the Microsoft site appears to completely surround the Friendfinder site.

 

5. Parties’ Contentions

A. Complainant contends that it has registered trademarks in MICROSOFT and MSN. Complainant further contends that the Domain Names are identical with and confusingly similar to the MICROSOFT and MSN trademarks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent does not contest Complainant’s assertion that it has registered trademarks in MICROSOFT and MSN or that the Domain Names are identical with and confusingly similar to the trademarks.

Respondent failed to contest Complainant’s assertion that Respondent has no rights or legitimate interest in the Domain Names.

Respondent failed to contest Complainant’s assertion that Respondent registered and used the Domain Names in bad faith.

 

6. Discussion and Findings

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

 

Identity or Confusing Similarity.

Microsoft’s trademark registrations serve as prima facie evidence of its ownership of the marks and of the validity of the MICROSOFT and MSN marks. 15 U.S.C. § 1115. Each of the registrations also serves as constructive notice of Microsoft’s rights in the MICROSOFT and MSN marks. 15 U.S.C. § 1072.

The Domain Names each consists of the MICROSOFT or MSN mark in combination with the terms, "instant messenger" or "messenger" each of which, as set forth above, merely describes a significant service offered under the MICROSOFT and MSN marks. Moreover, Respondent is using the Domain Names to divert traffic to a site that offers and promotes competing instant messaging services. As such, it is likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of Respondent’s services in that consumers and others are likely to believe Microsoft authorizes or controls Respondent and/or the Friendfinder site or that Respondent and/or the Friendfinder site is associated with or related to Microsoft.

Respondent has not contested the assertions by Microsoft that the Domain Names are confusingly similar to the MICROSOFT and MSN marks.

Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to either the MICROSOFT or MSN marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the MICROSOFT or MSN marks.

The Policy paragraph 4(c) allows three non-exclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Names:

(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.

Respondent has offered no evidence that the use of the Domain Names meets the elements for any of the non-exclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product.

Complainant alleges that Respondent and its principal officer and administrative contact, John Zuccarini, have engaged in a scheme to register numerous domain names that are comprised of famous trademarks and famous celebrity names or slightly misspelled versions of those trademarks and names with the intent to sell those domain names to the holder of the trademark or famous name and/or to misdirect users who are attempting to locate the official web site associated with the mark or name to other, often pornographic, sites.

Complainant further alleges that Respondent’s pattern of famous domain name registrations include "www.minoltacameras.com", "www.budgetrentalcar.com", "www.usatodaysports.com", "www.keanureaves.com", and "www.disneywallpaper.com", to name just a few. The registration of numerous domain names that contain the names or marks of well-known business entities or famous persons suggests an intent to profit from those registrations and is inconsistent with an intent to engage in any legitimate use of the domain names. See Stella D’Oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012 & 5(b)(1), (2); Nabisco Brands Co. v. The Patron Group, Inc., WIPO Case No. D2000-0032 & 5(b)(1), (2); J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035 ¶ 6; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 & 6(c).

Therefore, the Sole Panelist finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(c)(i).

The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(c)(ii).

The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(c)(iv).

The four criteria set forth in the Policy paragraph 4(b) are non-exclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.

On March 3, 2000, Microsoft sent Mr. Zuccarini a letter via email and certified mail, in which it informed him that it considered his registration of the "msninstantmessenger.com" domain name to infringe upon and dilute the MSN mark. Microsoft requested, among other things, that Mr. Zuccarini cease and desist from its use of the domain name and transfer the registration to Microsoft. When no response to this letter was received, Microsoft followed up with an email.

On March 22, 2000, the United States District Court for the Eastern District of Pennsylvania granted a preliminary injunction under the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d), against John Zuccarini, trading as Respondent, for Mr. Zuccarini’s bad faith registration of domain names that were substantially similar to plaintiff’s trademarks. See Shields v. Zuccarini, 2000, U.S. Dist LEXIS 3350 (March 22, 2000). In Shields, the plaintiff created, exhibited and marketed cartoons under the names "Joe Cartoon" and "Joe Cartoon Co." 2000, U.S. Dist LEXIS at *2. The plaintiff used the trademark JOE CARTOON to market his cartoons for the past fifteen years and registered the domain name joecartoon.com on June 12, 1997. Id. In November of 1999, Mr. Zuccarini, on Respondent’s behalf, registered as domain names five variations of the plaintiff’s trademark: "joescartoon.com", "joecarton.co", "joescartons.com", "joescartoons.com", and "cartoonjoe.com". Mr. Zuccarini hosted websites at these domain names featuring advertisements for other sites and for credit cards and received between 10 and 25 cents from advertisers for every click-through. Id. The Court in Shields granted plaintiff’s preliminary injunction, finding that "Zuccarini has engaged in exactly the type of conduct the ACPA is designed to prevent and [that plaintiff] will suffer irreparable harm unless we enjoin this flagrant violation of his rights." Id. at *26.

Recently, in Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330 (June 7, 2000,) under circumstances identical to those presented here, an ICANN Dispute Resolution Panel found that Mr. Zuccarini’s registration of the domain names "encyclopediabrittanica.com", "brittanica.com", "britanica.com" and "britannca.com" was an attempt "to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s web site" and was in bad faith. Id. At 3. The panel ordered the transfer of those names to the complainant, Encyclopedia Britannica.

In addition to any actual knowledge Respondent may have had regarding Microsoft’s rights in the MICROSOFT and MSN marks when it registered the domain names, it had constructive knowledge of Microsoft’s rights in the MICROSOFT and MSN marks by virtue of Microsoft’s federal trademark registrations. 15 U.S.C. § 1072. Despite its knowledge of Microsoft’s rights, Respondent has registered domain names that incorporate the MICROSOFT and MSN marks along with a description of services marketed under those marks. In light of Microsoft’s trademark registrations, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ¶ 7. The combination of Microsoft’s mark along with the service description is certain to result in confusion, especially given that upon typing in the domain names, Microsoft’s site appears – with an overlay of Respondent’s promotion for its competing "Friendfinder" site – in the background.

In light of: (i) the strong reputation and renown of the MICROSOFT and MSN marks; (ii) Respondent’s history and practice of registering domain names that contain famous trademarks or names or slightly misspelled versions of those marks and names; (iii) Respondent’s use of the Domain Names to deliberately divert traffic from Microsoft’s site to Respondent’s own competing site; (iv) the preliminary injunction entered against Respondent for similar conduct in Shields v. Zuccarini, (v) the finding of bad faith by the panel in Encyclopedia Britannica, Inc. v. Zuccarini; and (vi) the absence of any plausible use of the Domain Names that would not be unlawful, the Sole Panelist finds, independent of four non-exclusive criteria in the Policy paragraph 4(c), that the Domain Names were registered and used by Respondent in bad faith.

Therefore based upon each of the foregoing grounds, the Sole Panelist finds that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names "msninstantmessenger.com", "microsoftmessenger.com" and "msnmessenger.com" are identical with or confusingly similar to Complainant’s registered trademarks MICROSOFT or MSN, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Microsoft Corporation.

 


 

Richard W. Page
Sole Panelist

Dated: October 22, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0818.html

 

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