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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. StepWeb

Case No. D2000-1500

 

1. The Parties

Complainant is Microsoft Corporation ("Complainant" or "Microsoft"), a Washington corporation with its principal place of business in Redmond, Washington 98052-6399 USA.

Respondent is StepWeb ("Respondent" or "StepWeb"), a corporation with a mailing address of P.O. Box 2276, Livingston, New Jersey 07039 USA.

 

2. The Domain Name and Registrar

The Domain Name at issue is <microsofthome.com> (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.

 

3. Procedural History

On November 2, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 6, 2000, the Center received hardcopy of the Complaint. On November 10, 2000 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On November 13, 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 with Amendment 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 November 14, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On November 29, 2000, the Center received the Response of Respondent via email. On December 4, 2000, the Center received the Response of Respondent in hardcopy. On November 30, 2000, the Center advised Respondent of deficiencies in its Response.

On December 19, 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 the Sole Panelist.

 

4. Factual Background

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 education.

Microsoft’s products and services include computer operating systems, client/server applications, business and computer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, computer input devices, online information and entertainment services, electronic commerce, and computer publications.

In connection with these goods and services, Microsoft owns, among other trademarks, the famous 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 material.

Microsoft has spent substantial 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 world famous, and Microsoft has developed an enormous amount of goodwill in the mark.

In connection with the MICROSOFT mark, Microsoft has established Internet websites associated with the domain names <microsoft.com>, <microsoft.net,> and <home.msn.com>, among others. The Microsoft Websites allow computer users throughout the world to access information regarding Microsoft and its products and to use and enjoy the Internet services provided by Microsoft.

Microsoft and its technology partners have developed over the last four years a futuristic model home called "Microsoft Home." The purpose of Microsoft Home is to demonstrate the variety of ways that new and advancing technologies will be available in the future for use in our homes as well as in general, everyday life. The original prototype of the futuristic "Microsoft Home" is located at Microsoft’s facilities in Redmond, Washington. As a result of enormous interest generated in the "Microsoft Home," Microsoft is planning the launch of a new prototype "Microsoft Home" in New York City. The new "Microsoft Home" will be made available to the public on November 11, 2000 for physical, as well as virtual, tours.

As part of the launch of the "Microsoft Home" in New York, Microsoft intends to establish a website dedicated to providing virtual tours of, and information regarding, the "Microsoft Home." However, when Microsoft sought to register the domain name that consumers logically would associate with the Microsoft Home – <microsofthome.com> – it discovered that Respondent already had registered the Domain Name. Microsoft initially planned to launch its new www.microsofthome.com website on November 11, 2000. As a result of Respondents’ registration and use of the domain name, Microsoft has been forced to establish its "Microsoft Home" website at another domain name.

Microsoft alleges that before it contacted Respondent, consumers who typed in "microsofthome.com" into their Internet browsers were diverted by Respondent to its own commercial website located at www.stepweb.com which contained information about StepWeb’s products and services. Following receipt of a cease and desist letter from Microsoft, Respondent hastily erected a website at www.microsofthome.com that states that it is "under construction" and purportedly will offer, in the near future, commentary on Microsoft and its products. This "under construction" page contained a link to the StepWeb website. However, even with Respondent’s last-minute change to the www.microsofthome.com website, Microsoft alleges that Respondent is diverting traffic from official Microsoft websites for his own use, by virtue of the registration and use of the <microsofthome.com> Domain Name.

The administrative contact listed for StepWeb is Vlastimil Adamovsky who also appears to be the principal of StepWeb. The November 29, 2000 Response of StepWeb was in the form of a letter from Mr. Adamovsky. In the Response, StebWeb indicated that:

[W]e had already submitted a request for cancellation of the domain name several weeks prior the receipt of your [Microsoft’s] notification. However, Network Solutions unacceptably delayed the paperwork and it wasn't until we called them to complain about this, that they resumed with our paperwork. Instead of their regular 24 to 48 hours processing timeframe, it took them several weeks to simply provide us with a tracking number. In other words, we do not wish to be the owners of this domain name but Network Solutions is forcibly keeping us as the owners against our will.

Respondent further alleges in its response that it has never pointed the <microsofthome.com> Domain Name to the StepWeb website and is making fair use of the Domain Name because of its intent to comment on Microsoft products.

 

5. Parties’ Contentions

A. Complainant contends that it has a registered trademark in MICROSOFT. Complainant further contends that the Domain Name is identical with or confusingly similar to the MICROSOFT mark pursuant to the Policy paragraph 4(a)(i).

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

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

B Respondent does not contest Complainant’s assertion that it has a registered trademark in MICROSOFT or that the Domain Name is identical with and confusingly similar to the mark.

Respondent does not contest Complainant’s assertion that Respondent has no rights or legitimate interest in the Domain Name.

Respondent did contest Complainant’s assertion that Respondent registered and used the Domain Name in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel 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."

Respondent has indicated in its Response that it does not desire to retain the registration of the Domain Name. Therefore, the Sole Panelists finds on this basis alone that the Domain Name should be transferred to Microsoft Corporation.

As a separate and independent basis for relief, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Even though Respondent has failed to contest the elements set forth in Paragraphs 4(a)(i) and (ii), the Sole Panelist will review each of the essential elements.

Identity or Confusing Similarity.

Complainant contends that it has a registered trademark in MICROSOFT. Complainant further contends that the Domain Name is identical with or confusingly similar to the MICROSOFT mark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Microsoft that it has a valid registration of the MICROSOFT mark. Therefore, the Sole Panelist finds that Microsoft has a valid trademark in MICROSOFT.

Complainant further contends that the Domain Name <microsofthome.com> is identical with or confusingly similar to the MICROSOFT mark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Microsoft that the Domain Name is confusingly similar to the MICROSOFT mark.

The Sole Panelist notes that the entirety of the mark MICROSOFT is included in the Domain Name.

Of critical importance on the Internet is the routing or diversion of traffic to one’s website. The use of a registered trademark in a domain name allows the entity registering the domain name to capture traffic and point or divert it to another website.

Complainant also alleges that Respondent has not used the Domain Name in connection with the bona fide offering of any goods or services. In fact, prior to receipt of Microsoft’s demand letter, Respondent had not used the Domain Name <microsofthome.com> to establish a website. Instead, Respondent used the Domain Name to divert consumers to its Internet website located at www.stepweb.com, a website which purports to provide advice regarding website use and Internet business. Other than the use of the <microsofthome.com> Domain Name to point at www.stepweb.com, the StepWeb site did not make any use of the <microsofthome.com> Domain Name, either in connection with a legitimate business venture or in any other way. Complainant further alleges that the StepWeb website had no reference or mention of Microsoft at all. Because Respondent "pointed" the <microsofthome.com> Domain Name at the StepWeb website, the internet user would be taken to the StepWeb website and the <microsofthome.com> Domain Name would disappear. After Respondent received Microsoft’s cease and desist letter, Respondent immediately stopped pointing the <microsofthome.com> Domain Name at www.stepweb.com and hastily erected an "under construction" webpage at www.microsofthome.com that purportedly will provide, in the future, commentary on Microsoft and its products. Respondent has denied that it points hits from the Domain Name <microsofthome.com> to www.stepweb.com.

However, 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 trademark. See Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (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." (citations omitted)). Thus, consumers would expect to find an official Microsoft website at a domain name comprised of the famous Microsoft mark. In particular, consumers looking for information regarding the "Microsoft Home" or "Microsoft Home" products would assume that the website address www.microsofthome.com would take them to an official Microsoft site that provides such information.

Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the MICROSOFT mark 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 Name pursuant to the Policy paragraph 4(a)(ii).

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.

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

(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 Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c)(i) and (ii).

Respondent alleges that its intent to post contents on the www.microsofthome.com website constitutes fair use. Complainant alleges that no content has been posted on this website. The Domain Name has been used solely for the purpose of diverting internet traffic to Respondent’s own website. Respondent’s activities do not constitute fair use of the Domain Name.

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

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

The Policy paragraph 4(b) sets forth four nonexclusive 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

In September 1997, Respondent registered the <microsofthome.com> Domain Name. The Domain Name incorporates the MICROSOFT mark, as well as the address for Microsoft’s official website at www.microsoft.com. Respondent merely builds on the MICROSOFT mark and website and adds a word, "home," which would logically refer to the home page of Microsoft’s official website, or to a product or service offered by Microsoft – such as the public launch of the "Microsoft Home." It is not possible that Respondent was unaware of the famous Microsoft mark at the time it registered the <microsofthome.com> domain name three years ago.

The Sole Panelist finds based upon the evidence before him that Respondent has used the <microsofthome.com> Domain Name to divert Internet traffic away from Microsoft and to its own website by pointing the website address www.microsofthome.com to StepWeb’s website at www.stepweb.com. Respondent most likely engaged in this activity in order to profit from the enormous level of Internet traffic from Internet users seeking official Microsoft websites. Respondent’s last-minute construction of a "commentary" site at <microsofthome.com> does not change the intent demonstrated by the original use of the Domain Name.

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

Therefore, based upon Complainant having shown the necessary elements of the Policy paragraph 4(b)(iv), the Sole Panelist finds that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist finds that Respondent consents to the transfer of the Domain Name. In addition, the Sole Panelist concludes (a) that the Domain Name <microsofthome.com > is confusingly similar to Complainant’s registered trademark MICROSOFT, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Microsoft Corporation.

 


 

Richard W. Page
Sole Panelist

January 19, 2001

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2000/d2000-1500.html

 

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