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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. WDW Inc. and William Claude Dukenfield
Case No. D2002-0412
1. The Parties
The Complainant is Microsoft Corporation, a Washington corporation located in Redmond, Washington, United States of America, represented by the law firm of Arnold & Porter.
The Respondents are WDW Inc. and its technical contact William Claude Dukenfield, located in New York, United States of America, neither of whom is represented by counsel. Collectively, the named parties are referred to as "Respondent."
2. The Domain Names and Registrar
The domain names in dispute are <microsoftcertified.com> and <microsoftcertified.info> (hereinafter the "Domain Names"). Both are registered with Tucows, Inc. (hereinafter the "Registrar"), located at 96 Mowat Avenue, Toronto, Ontario, Canada.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was sent by email and hard copy to the Center, to The Registrar, Inc, and to Glenn Taylor who at the time the Complaint was filed was listed as the registrant of the Domain Names. By email dated April 30, 2002, and sent at 6:30 p.m., Mr. Taylor acknowledged to counsel for Complainant his receipt of the Complaint. The Center acknowledged receipt of the email copy of the Complaint on May 3, 2002, and received a hard copy of the Complaint on May 2, 2002.
On May 3, 2002, the Center contacted the Registrar seeking verification that the Domain Names were registered with the Registrar and also seeking confirmation that the respondent named in the original complaint, Glenn Taylor, was the registrant for both Domain Names. By return email dated May 3, 2002, The Registrar confirmed receipt of the Complaint, confirmed that it was the registrar of the Domain Names and confirmed that respondent Glenn Taylor was the registrant. While verifying Glenn Taylor as the registrant, the Registrar also indicated that the registrant of the Domain Names, according to its records, was WDW, Inc. of 111 Quality Street, New York with William Claude Dukenfield of the same address as the administrative and billing contact for the Domain Names. Upon receipt of the verification from the Registrar, the Center sent a request for clarification. The Registrar, by email dated May 6, 2002, indicated that it made a mistake when it said that the original named respondent Glenn Taylor and the current registrant were the same.
Based on the information received from the Registrar, the Center, on May 7, 2002, contacted counsel for Complainant advising that the respondent listed in the original complaint was not the proper party and requesting that Microsoft amend its complaint listing as the respondent WDW, Inc. The Center required that the amended complaint be submitted not later than May 12, 2002. Copies of this notice were emailed by the Center to Glenn Taylor as the original registrant as well as to WDW, the current registrant of the Domain Names. In response to that email, the Center received four e-mails, two from Glenn Taylor and two from WDW.
On May 10, 2002, counsel for Complainant forwarded by email an Amended Complaint to the Center with copies to the Registrar and to the Respondent. Hard copies of the Amended Complaint were received by the Center on May 15, 2002. The Center completed its compliance review on May 16, 2002, and on that day formally notified the Respondent of the formal institution of the proceeding. The formal notification advised Respondent that it had until June 5, 2002, to file a response to the Complaint. Respondent submitted an email in response to the notification to the Center on May 16, 2002, which did not comply with the formal requirements that the Center has established for submitting answers to domain dispute complaints. Thus, on June 7, 2002, the Center notified the parties that Respondent was in default. On June 19, 2002, after receiving the statement of impartiality from the panelist, the Center appointed a Panel to decide the case and requested that the decision be forwarded by July 3, 2002.
4. Factual Background
The Complainant is the owner of the MICROSOFT mark, which it has been using since 1975 in connection with computer software and related products and services. Complainant has trademark registrations in the United States for the mark MICROSOFT. The Complainant alleges that it has spent substantial time, effort and money advertising and promoting the MICROSOFT mark throughout the United States and the world (but has not set forth any figures or amounts).
In connection with its products and services, Complainant has created a variety of certification programs to qualify information technology professionals to perform computer and computer network tasks. It is not clear from Complainant’s papers when this certification program was first established. As part of the certification program, individuals who are qualified as Microsoft Certified Professionals may use the MICROSOFT mark as part of the Microsoft Certified Professional logo. The guidelines posted by Complainant as of February 14, 2002, (Complaint, Ex. H) prohibit the use of the MICROSOFT name in any domain name. Complainant has not indicated when those guidelines first came into existence.
On November 1, 1998, the domain name <microsoftcertified.com> was registered. It is not clear what use was made of the domain name from 1998 until 1999. In 1999, the domain name directed Internet users to a website that offered Microsoft networking and consultation and identified the owner of the website, Glenn Taylor, as a Microsoft Certified Professional. It is not known how long this website was available at the <microsoftcertified.com> domain name. In March 2001, Internet users who typed in the <microsoftcertified.com> URL were taken to a page advising that "you can get your name @ MicrosoftCertified.com for only $25.00 per year." This use, or similar use, appeared to continue to at least May 2001. See Complaint, Exs. L and M. At some point in 2001, the <microsoftcertified.com> URL directed Internet traffic to a website for Taygee Computers which offered Glenn Taylor’s computers for sale. See Complaint, Ex. I.
On December 19, 2001, Complainant, by its counsel, sent a demand letter to Glenn Taylor, then the owner of the <microsoftcertified.com> domain name, asking for the transfer of the domain name and advising that if the <microsoftcertified.com> domain name registrant refused to transfer the domain name, Complainant would file a Complaint under the Policy. Complaint, Ex. O. In response to the demand letter, Glenn Taylor advised that he was a Microsoft Certified Professional. He also advised that he would cease using the domain name in connection with his website selling computers and that he would "turn it into a porn site as soon as I can." Shortly after advising Complainant of his intention to route his domain name to a porn website, the registrant apparently changed his mind and offered to sell the domain name for $100,000 plus a free course plus an agreement that Complainant would not charge him for any further certification exams. Complaint, Ex. Q. This was rejected. The domain name registrant separately contacted an employee of Complainant advising that he would agree to transfer the domain name to Complainant and asked specifically who he needed to speak to "to arrange for this transfer and at what price?" In his e-mail, Mr. Taylor stated that all he has ever sold is Microsoft approved products from Microsoft approved distributors. Complaint, Ex. R. Mr. Taylor then advised counsel for Microsoft, by e-mail dated December 28, 2001, that he would give the name back. Complaint, Ex. S.
There then followed an exchange of several e-mails and letters concerning the mechanics for transferring the domain name. As of February 13, 2002, the domain name still had not been transferred. Instead, it appeared that the domain name registrant had created a link so that Internet users who typed in <microsoftcertified.com> were taken directly to Complainant’s home page. Complainant advised the registrant that this was not sufficient and that transfer of the domain name was required. Mr. Taylor advised Complainant on February 13, 2002, that because he was a Microsoft Certified Professional he had the right to display the logo and that he was no longer willing to transfer the domain name. During the time when the parties were discussing the possibility of transferring the <microsoftcertified.com> domain name, Mr. Taylor, on January 8, 2002, registered the domain name <microsoftcertified.info>.
On April 30, 2002, Complainant, through its counsel, forwarded its Complaint in this matter by e-mail to Glenn Taylor, who acknowledged receipt by sending a reply e-mail to Complainant on April 30, 2002, at 6:30 p.m. At approximately 8:30 a.m. on May 1, 2002, the registrant information for both <microsoftcertified.com> and <microsoftcertified.info> was changed and the registrant was listed as WDW, Inc. Although both Domain Names, as of May 1, 2002, were listed as being owned by the Respondent named in the Amended Complaint, on May 7, 2002, six days after the transfer, the original registrant, Glenn Taylor, contacted the Center asking when he would get an opportunity to file a reply to the Complaint. Approximately 15 minutes later, WDW, the current Respondent, sent an e-mail to the Center asking why he could not use the Domain Names if he was in fact certified by Complainant. Two minutes later, Glenn Taylor sent an e-mail to the Center in response to the Complaint saying Microsoft could have the domain names, noting that he expected Complainant to "at least offer to pay for the hosting . . .." An identical e-mail was received nine minutes later by the Center from WDW, the Respondent.
After the Amended Complaint was sent to the current Respondent, WDW sent an e-mail on May 16, 2002, to the Center advising that he was Microsoft Certified, that he is recognized as being certified by Complainant, that he has a Microsoft Certified Professional number and is a Microsoft systems builder.
5. Parties’ Contentions
The Complaint requests that the Panel transfer the domain names <microsoftcertified.com> and <microsoftcertified.info> to Complainant on the following legal grounds:
First, Complainant claims ownership of and rights in the mark MICROSOFT.
Second, Complainant alleges that the Domain Names are identical to the MICROSOFT mark and are confusingly similar to the address for its official website at <www.microsoft.com>.
Third, Complainant claims that the use of the Domain Names is likely to cause initial interest confusion or is likely to cause consumers to believe that the goods and services offered or advertised at websites connected to the Domain Names are sponsored, endorsed or authorized by Complainant.
Fourth, Complainant alleges that Respondent has no legitimate interest in the Domain Names and that even if Respondent is a Microsoft Certified Professional, Respondent has no license or consent, express or implied, to use MICROSOFT in or as part of a domain name.
Fifth, Complainant claims that Respondent is unfairly using the Domain Names for his own benefit in order to promote his company’s products over the Internet.
Sixth, Complainant claims that Respondent registered the domain names to trade on the reputation of and goodwill associated with the MICROSOFT mark as evidenced by its offer to sell the Domain Names at a profit.
Seventh, Complainant alleges that the Domain Names were registered and used in bad faith based on the request by Respondent for payment for the Domain Names, on Respondent’s use of the domain names to direct traffic to his Taygee website where he sells products, including computer software and based on his threat to post pornographic content at <www.microsoftcertified.com>.
Respondent did not file a formal response to the Complaint and, as such, was declared in default by the Center. However, Respondent did submit numerous e-mails to the Center, all of which clearly were in response to the Complaint that was filed and all of which were submitted prior to the due date for filing an answer. As such, they should not be ignored or disregarded. Creo Products Inc. v. Website in Development, WIPO Case No. D2000-1490 (January 19, 2002).
In the various e-mail submissions made by Respondent, Respondent suggests that because he is a Microsoft Certified Professionals he is entitled to use the MICROSOFT mark in or as part of a domain name.
6. Discussion and Findings
In order for Complainant to prevail in this matter and to obtain the requested relief of a transfer of the Domain Names, Complainant must prove:
- That it has rights in the mark MICROSOFT;
- That the Domain Names are identical or confusingly similar to Complainant’s trademark;
- That the Respondent has no rights or legitimate interests in the Domain Names; and
- That the Domain Names were registered and are being used in bad faith. See Policy, Paragraph 4(a).
Procedural Issues – Who Is the Respondent
The bulk of Complainant’s submissions on the issues of lack of legitimate rights and bad faith are against the original registrant, Glenn Taylor. However, Glenn Taylor is not the Respondent. Thus, the critical question is whether the transfer of the Domain Names from Glenn Taylor to the current registrant and named Respondent can be voided and if they cannot be voided, whether there is any basis for a finding bad faith registration and bad faith use by the current Respondent based on Mr. Taylor’s activities.
Paragraph 8(a) of the Policy advises the domain name registrant that he "may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to paragraph 4 . . .. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph." Panelists who have had the opportunity to consider this provision have interpreted paragraph 8(a) as applying from the time the complaint is filed not from the formal commencement of the proceeding under Rule 3(a). As noted in British Broadcasting Corporation v. Data Art Corporation/Stonybrook, WIPO Case No. D2000-0683 (September 20, 2000), "[t]o interpret section 8(a) of the Policy in such a way as to permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider would not do justice to complainants who have initiated complaints in accordance with the Policy and Rules. Moreover, such an interpretation would appear to permit, if not encourage the phenomenon cyberflying, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding." In that case, the panel ignored the transfer. See also, Imperial Chemical Industries, plc v. Oxford University, WIPO Case No. D2001-0292 (May 11, 2001) (finding that where complaints were properly served before a transfer occurred the change in the domain name owner does not prevent implementation of a decision).
The uncontested evidence here is that after the Complaint was filed electronically with the Center and was sent to, received by, and acknowledged by Mr. Taylor, Mr. Taylor transferred the Domain Names. Given this chronology, under Paragraph 8(a) of the Policy, the transfer to the current Respondent can be ignored.
Even if the transfer could not be ignored, it is apparent from the evidence presented that the current listed owner of the Domain Names is . Specifically, on May 7, 2002, both WDW, Inc. and Glenn Taylor submitted comments to the Center with respect to the Complaint, thereby showing that Mr. Taylor had not given up his claim to the Domain Names. Two of those e-mails, one submitted by Glenn Taylor on May 7, 2002, at 3:49 and one submitted by WDW, Inc. at 3:58 were identical. In addition, both WDW and Glenn Taylor have raised in various correspondence and pleadings the right to use the Domain Names because they are Microsoft Certified Professionals. Finally, WDW had an opportunity to respond to the Amended Complaint to set forth facts and evidence to indicate that it was not an alter ego of or otherwise related to Glenn Taylor, WDW did not provide any such evidence. The failure to reply to this issue of ownership allows the Panel to draw an inference that the Respondent does not deny the facts which the Complainant asserts or the conclusions which the Complainant asserts can be drawn from the facts. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 13, 2000). Accordingly, the Panel treats WDW as being identical to or affiliated with Glenn Taylor and determines that the evidence of bad faith relating to Glenn Taylor can be applied to WDW.
Rights in the Mark
Based on the Panel’s review of the records of the United States Patent and Trademark Office as well as the determinations made by prior panels ( e.g., Microsoft Corporation v. MindKind, WIPO Case No. D2001-0193 (April 20, 2001); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (January 19, 2001)), it is clear that the Complainant is the owner of rights in the mark MICROSOFT, a finding not contested by Respondent.
Identical or Confusing Similarity
In addressing this aspect of the Policy, Complainant sets forth numerous arguments about likelihood of confusion, confusion under the Lanham Act, and initial interest confusion. Those arguments are irrelevant for the purposes of the Policy and for purposes of determining identical or confusing similarity under the Policy. Identical or confusing similarity under the Policy is not the same as the issue of likelihood of confusion under trademark law. Rather, the determination is made based on a comparison of the marks without reference to other issues. Rolex Watch U.S.A., Inc. v. Spider Webs Ltd., WIPO Case No. D2001-0398 (July 2, 2001).
The disputed Domain Names incorporate the whole of the MICROSOFT mark followed by the term "certified." The addition of the generic word "certified" does not serve to sufficiently distinguish the Domain Names from the MICROSOFT trademark. Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000). Indeed, given Complainant’s evidence that it provides a certification program, the addition of this word may actually increase confusion. Accordingly, Complainant has established this element.
Under the Policy, legitimate interests in the Domain Names may be demonstrated by showing that: (i) before any notice of this dispute Respondent used, or demonstrably prepared to use, the Domain Names, or a name corresponding to the Domain Names, in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the Domain Names, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademarks at issue. Policy, Paragraph 4(c).
The critical issue here is whether a person who is certified by Microsoft and who has the right to fairly and accurately describe himself as "Microsoft Certified" may use that term as a domain name. Complainant’s guidelines posted in February 2002 prohibit the use of the MICROSOFT mark in or as part of a domain name. Conduct that violates the terms of an agreement or contract cannot create legitimate rights in a domain name. Heel Quik!, Inc. v. Michael H. Goldman, NAF 92527. While Respondent, if it is truly a Microsoft Certified Professional, does have a right to fairly and accurately describe himself using those terms, this right does not necessarily extend to allowing the Respondent to create a domain name using the MICROSOFT mark. See Deloitte Touche Tohmatsu v. Robert Thorp, WIPO Case No. D2001-1431 (January 31, 2002).
Respondent also cannot show that it has been commonly known by the Domain Names. As to Respondent’s use of the domain name prior to receipt of notice of the dispute, there is no question that before Respondent registered <microsoftcertified.info> it was on notice of Complainant’s position in this case. Thus, no legitimate rights can be established with respect to <microsoftcertified.info>. As to the domain name <microsoftcertified.com>, clearly this was being used by the Respondent before receiving any demand letter or other complaint by Complainant. However, the fact that there was use prior to notification of the dispute does not make the use legitimate or acceptable. It is assumed (primarily because the Respondent has not contested it) that at the time this domain name was registered the Respondent was aware of Complainant’s guidelines prohibiting use of the term MICROSOFT as part of a domain name. Moreover, even if there is use prior to being notified of the dispute, if that use is infringing, it cannot be deemed legitimate. Madonna Ciccone p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 (October 12, 2000). Here, the use that had been made of the <microsoftcertified.com> domain name prior to receiving a demand letter from Complainant was likely to cause confusion in that it suggested that there was an official relationship between the website and Complainant when none existed. Accordingly, Complainant has satisfied its requirements of Paragraph 4(a)(ii) of the Policy.
Bad Faith Registration and Use
The final element that Complainant must prove is that the Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets forth various types of evidence showing registration and use in bad faith although the circumstances set forth therein are not the only circumstances showing bad faith use and registration. See e.g., 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110 (April 10, 2000).
Paragraph 4(b)(i) of the Policy refers to circumstances indicating that the Respondent registered the Domain Names primarily for the purpose of transferring them to the owner of the mark for valuable consideration in excess of documented out-of-pocket costs. In this case, Respondent sought to sell the names to Complainant who is the owner of them and asked for compensation far in excess of any documented out-of-pocket costs. This alone is sufficient to establish bad faith use. As to bad faith registration, <microsoftcertified.info> was registered well after Complainant had objected to the registration of <microsoftcertified.com> and was clearly registered with knowledge of Complainant’s objection. Furthermore, Complainant alleges, and Respondent does not contest the fact, that at the time the Domain Names were registered, Respondent was on notice of Complainant’s policy forbidding the use of the MICROSOFT mark in or as part of a domain name even if Respondent was a Microsoft Certified Professional. These facts lead to a finding of bad faith registration of the Domain Names.
Complainant has proved the necessary elements of the Policy to obtain the relief requested. Specifically, Complainant has shown rights in the MICROSOFT trademark, has shown that the Domain Names are identical or confusingly similar to the trademark in which Complainant has rights, that Respondents have no rights or legitimate interest in the Domain Names, and that Respondents registered the Domain Names in bad faith and are using them in bad faith. Therefore, Complainant’s request for transfer of the Domain Names <microsoftcertified.com> and <microsoftcertified.info> is hereby granted.
Barbara A. Solomon, Esq.
Dated: July 1, 2002
1. In the future, Complainant would be advised to provide to the Panel evidence to support the allegations of rights which would include but is not limited to actual copies of trademark registrations or printouts from the USPTO database showing registrations in the name of Complainant, articles listing Complainant as one of the best-known companies in the world, and cases which have held the MICROSOFT name protectable. Complainant does have the burden of proof and must discharge that burden with actual evidence.
2. Complainant suggests that because the WHOIS records did not state that the names were transferred no transfer of the names occurred. There is no merit to this argument as WHOIS records generally never identify that a transfer occurred but merely show when records have been updated for any purpose.