WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. J. Holiday Co.

Case No. D2000-1493

1. The Parties

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

Respondent is J. Holiday Co. ("Respondent" or "Holiday") located at 3767 Vineyard, Pleasanton, California, 94566 USA.

2. The Domain Name and Registrar

The domain name at issue is <4microsoft2000.com> (the "Domain Name"). The registrar is Domain People Inc. (the "Registrar").

3 . Procedural History

On November 1, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 3, 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 30, 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 Names and that the Domain Names are 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 December 4, 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 January 18, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On February 5, 2001 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, 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.

Microsofts 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 world famous trademark MICROSOFT. 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 MIRCOSOFT mark, Microsoft has established Internet websites located at the domain names <microsoft.com> and <microsoft.net> (collectively, the "Microsoft Websites"). 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.

J. Holiday Co. has registered the Domain Name <4microsoft2000.com> and has used the Domain Name to establish a website that sells computer software products that are not made by, or in anyway affiliated with, Microsoft. Complainant alleges that Respondent has capitalized on the fame of the Microsoft Mark in order to sell products that are in competition with Microsofts products.

Microsoft's counsel has attempted to resolve this matter informally, by sending a letter and email to the entity identified as the registrant of the Domain Name requesting that it voluntarily agree to transfer the Domain Name to Microsoft. In addition, Microsoft attempted to telephone the registrant regarding this matter. However, the principal of Respondent, Mr. Jim Holiday, could not be reached at the telephone number set forth in the registration record for the Domain Name. Microsofts counsel also left a message at the telephone number listed on the J. Holiday Co. website. J. Holiday Co. never responded. Finally, the address J. Holiday Co. provided to Domain People Inc. is not a complete address. The letter Microsoft's counsel sent to that address was returned as an "insufficient address." Microsoft has attempted to resend this letter to the address listed at the J. Holiday Co. website.

5. Parties Contentions

A. Complainant contends that it has numerous registrations of the trademark MICROSOFT. Complainant further contends that the Domain Name is identical with and 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 failed to contest Complainants assertion that it has numerous registrations of the MICROSOFT mark or that the Domain Name is identical with and confusingly similar to the mark.

Respondent failed to contest Complainants assertion that Respondent has no rights or legitimate interest in the Domain Name.

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."

Since both the Complainant and Respondent are domiciled in the United States, and since United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Even though Respondent has failed to file a Response or to contest Complainants assertions, 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.

Identity or Confusing Similarity.

Complainant contends that it has numerous registrations of the trademark MICROSOFT. Complainant further contends that the Domain Name is identical with and confusingly similar to the MICROSOFT mark pursuant to the Policy paragraph 4(a)(i).

Complainant has numerous registrations of the trademark MICROSOFT and its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the MICROSOFT mark. 15 U.S.C. 1115. Microsofts registrations are incontestable and conclusive evidence of Microsofts ownership of the mark and exclusive right to use the mark in connection with the stated goods and services. 15 U.S.C. 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047.

Respondent has not contested the assertions by Microsoft that it has valid registrations of the MICROSOFT mark. Therefore, the Sole Panelist finds that Microsoft, for purposes of this proceeding, has enforceable trademark rights in the MICROSOFT mark.

Complainant further contends that the Domain Name is identical with and 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. Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 23:50 (4th ed. 1998). The addition of the phrase ".com" is non-distinctive because it is a gTLD required for registration of a domain name. The other phrases "4" and "2000" are shorthand expressions leading the Internet user to understand that the Domain Name is "for Microsoft 2000" products. Therefore, the Sole Panelist finds that the matter in the Domain Name other than the MICROSOFT mark is non-distinctive and descriptive.

Of critical importance on the Internet is the routing or diversion of traffic to ones 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. Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the companys name or trademark. See Panavision Intl, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) ("A customer who is unsure about a companys domain name will often guess that the domain name is also the companys name." . . . "[A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base."). Thus, consumers would expect to find a website at "4microsoft2000.com" that is somehow associated with or sponsored by Microsoft. As a result of Respondent's actions, consumers who are seeking an official Microsoft website located at a domain name comprised of the Microsoft Mark, "4microsoft2000.com," will find J. Holiday Co.'s website that sells computer programs that are not produced by Microsoft. As a result of Respondents actions, consumer expectations are frustrated as they either are unable to purchase Microsoft products at <4microsoft2000.com> or mistakenly purchase competing software believing it to be a Microsoft product.

Prior ICANN panels have, also, found that use of a companys entire trademark with non-distinctive and descriptive matter creates confusion. See ISL Marketing AG et al v. J. Y. Chung et al, WIPO Case No. D2000-0034 (February 18, 2000) (finding worldcup2002 [.com, .org. and .net] to be confusingly similar to the WORLDCUP mark.); see also The Price Company v. Price Club, WIPO Case No. D2000-0664 (June 6, 2000) (finding priceclub2000.com to be confusingly similar to the PRICE CLUB mark).

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 relationship with or permission from Complainant for the use of the MICROSOFT mark.

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

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

The file contains 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). 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

The Sole Panelist found above that the Domain Name is confusingly similar to the MICROSOFT mark. Part of the reason for confusing similarity was the potential confusion created regarding the source, sponsorship, affiliation, or endorsement by Microsoft of the Domain Name and the website to which it resolves. Under these circumstances, the Sole Panelist finds that this confusing similarity is equivalent to the likelihood of confusion required under the Policy paragraph 4(b)(iv). The uncontested evidence in this proceeding is that the Respondent is intentionally attracting Internet users to its website for the commercial purpose of selling products. The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

Therefore, 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 concludes (a) that the Domain Name <4microsoft2000.com> is confusingly similar to Complainants 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

Dated: February 20, 2000

---