WIPO Arbitration and Mediation Center

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

The Respondent in this proceeding is MindKind ("Respondent"), the registrant of the domain name in issue with a listed mailing address of 9974 Scripps Ranch Blvd #211, San Diego, CA 92131, USA. The Administrative/Technical/Billing Contact for the domain name registration is listed as "Janice Robertson" ("Ms. Robertson") with the same postal address as the registrant.

The domain name in issue is "microsofthealth.com".

The registrar of the domain name in issue is Network Solutions, Inc. ("NSI") located at 505 Huntmar Park Drive, Herndon, Virginia, USA.

On February 6, 2001, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name "microsofthealth.com" and paid the required filing fee for appointing a single member Panel. On February 7, 2001, the Center sent an "Acknowledgement of Receipt of Complaint" to the Complainant and the Respondent.

On February 7, 2001, a "Request for Verification" concerning the domain name was sent to NSI. On February 12, 2001, NSI provided a Verification Response to the Center stating, in pertinent part, that: (i) it had received the Complaint from the Complainant as required by the Policy; (ii) it is the registrar of the domain name "microsofthealth.com"; (iii) "MindKind" is the current registrant of the domain name registration with a listed mailing address of 9974 Scripps Ranch Blvd #211, San Diego, CA 92131, US; (iv) "Janice Robertson" is the Administrative/Technical/Billing Contact for the domain name registration having the same postal address as the registrant; (v) NSIs 4.0 Service Agreement is in effect; and (vi) the domain name is currently in "active" status.

On February 13, 2001, the Center found the Complaint to be in compliance with the formal requirements of ICANNs Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANNs Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPOs Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

On February 14, 2001, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" ("Notification") and the Complaint to the Respondent at the e-mail address, postmaster@microsofthealth.com, and to the postal address, e-mail address and facsimile number listed in the domain name registration. Copies of the Notification and Complaint were also sent to NSI, ICANN and the Complainant. When the Notification and Complaint were sent to the e-mail address, postmaster@microsofthealth.com, an error message was received indicating non-delivery. The Center, however, did not receive an error message or notice of non-delivery when the Notification and Complaint were sent to the e-mail and postal addresses listed in the registration for the Respondent.

On March 7, 2001, after the twenty day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.

On March 13, 2001, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. On March 14, 2001, the Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center. On March 15, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.

Based upon a review of the record for this proceeding, the Panelist concurs with the Center's finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. Further, the Panelist finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a Response. The Panelist shall accordingly draw such inferences from the Respondents default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Policy, the Rules and the Supplemental Rules.

The Complaint is based on the mark MICROSOFT registered with the U.S. Patent and Trademark Office. In support of the Complaint, the Complainant relies on 65 U.S. trademark registrations for the mark MICROSOFT and variations thereof, including Registration No. 2,337,072 for the mark MICROSOFT used in connection with "providing information concerning parenting and children's health, nutrition, and well being over computer networks and global communication networks." Copies of the printouts for all of these registrations based on search results of the U.S. Patent and Trademark Office online trademark database were attached as Exhibit D.

A search result from a query of NSIs Whois database shows that the domain name "microsofthealth.com" was registered on April 9, 1999 to the Respondent and that there is currently no corresponding Web site accessible at this domain name.

A search result from a query of NSIs Whois database shows that the domain name "microsoft.com" is registered to the Complainant and that there is a corresponding Web site accessible at the "microsoft.com" domain name.

The Complainant asserts that it 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. The Complainant asserts that it is the owner of numerous federal trademark registrations for the MICROSOFT mark and variations thereof, in numerous classes of goods and services. (printouts of such registrations attached as Exhibit D). The Complainant further asserts that it has registered the mark MICROSOFT "for use in connection with the advertising and distribution of health-related information and services over the Internet" through "Registration No. 233702 [sic], which includes information concerning parenting and childrens health, nutrition, and well being over computer networks and global communication networks." The Complainant asserts that, as a result of spending substantial time, effort and money advertising and promoting the MICROSOFT mark throughout the United States and the world, it has become world famous and the Complainant has developed an enormous amount of goodwill in the MICROSOFT mark.

The Complainant asserts that it offers its health-related information, products, and services to online consumers through its Web site located at "health.msn.com" (printout attached as Exhibit E) and that Internet users may either access this site directly or through links from other Microsoft Web sites, including its Microsoft Network home page at "msn.com". The Complainant further asserts that it offers its health-related information, products and services to online consumers through the website located at "health.msn.com" and that Internet users may either access this website directly or through links from other Microsoft websites, including its Microsoft Network home page at "msn.com". The Complainant asserts that it intends to offer its online consumers the most convenient access to the health-related information, products and services that the Complainant provides, through one dedicated website at an easy to remember domain name. For that reason, the Complainant would like to offer consumers the Complainants health-related information, products, and services at the domain name "microsofthealth.com." However, when the Complainant attempted to register this domain name, the Complainant asserts that it discovered that the name had already been registered by the Respondent, and that consumers who typed in the website address were instead being diverted by the Respondent to its own company website at "www.mindkind.com." The Complainant thus asserts that consumers would expect to find an official website of the Complainant at a domain name comprised of the famous MICROSOFT mark and that consumers looking for health-related information, products or services from the Complainant may assume that the Web site address "www.microsofthealth.com" would take them to an official site of the Complainant that provides such information, products, and services.

The Complainant asserts that, until recently, the "microsofthealth.com" domain name redirected users to the Respondents commercial Web site at "mindkind.com", which contained information about MindKinds products and services, but made no mention of the "microsofthealth.com" domain name. A declaration from one of the Complainants employees was submitted to support this assertion along with a copy of the redirected Web page. The Complainant asserts that the Respondent has deactivated the "microsofthealth.com" domain name and left it inactive. The Complainant asserts that the Respondent has diverted traffic from official Microsoft Web sites for its own use and continues to frustrate consumers seeking to find an official Microsoft Web site at "microsofthealth.com".

The Complainant asserts that the domain name "microsofthealth.com" is confusingly similar to the Complainants MICROSOFT mark since it incorporates the MICROSOFT mark, as well as the address for the Complainants official Web site at "microsoft.com". The Complainant asserts that confusion is not eliminated by the Respondents mere addition of the word "health" to its MICROSOFT mark, which logically would refer to a product or service offered by the Complainant, or even to information about the Complainant itself.

The Complainant asserts that, on or about October 25, 2000, it has attempted to contact the Respondent using the telephone number listed in the Whois record for the domain name "microsofthealth.com". The Complainant asserts that the telephone number was not functional because the only response it received was a "quick busy signal." The Complainant asserts that on December 13, 2000, via e-mail and post, it provided explicit written notice to Respondent that the Complainant has exclusive rights in the MICROSOFT trademark, in which it demanded that the Respondent transfer the "microsofthealth.com" domain name to the Complainant (a copy of letter attached as Exhibit G). The Complainant asserts that, after receiving no response, it sent the Respondent another letter on January 8, 2001, to which it also did not receive a response. (a copy of letter attached as Exhibit H).

The Complainant asserts that it is harmed by Respondents registration of "microsofthealth.com". First, the Complainant asserts that the Respondent has no connection or affiliation with the Complainant, 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.

Second, the Complainant asserts that there is no evidence to indicate that the Respondent: (i) has, at any time, used or made demonstrable preparations to use, the domain name or any name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) has been known, commonly or otherwise, by the domain name or any name corresponding to the domain name; (iii) has acquired any legitimate rights whatsoever (including trade/service mark rights) in the domain name or any name corresponding to the domain name; or (iv) has made any legitimate noncommercial or fair use of the domain name.

Next, the Complainant asserts the Respondent had registered the domain name in bad faith because the international fame of the MICROSOFT mark leaves no question of the Respondents awareness of the Complainants mark at the time it registered the domain name. The Complainant asserts that the Respondent had used the domain name in bad faith to divert Internet traffic away from the Complainants sites and to its own Web site at "mindkind.com", and that the Respondents bad faith use is not negated by its last-minute decision to temporarily cease its use of the domain name at issue. The Complainant asserts that the Respondent engaged in this activity in order to benefit from the enormous level of Internet traffic from Internet users seeking official Microsoft Web sites. The Complainant asserts that the Web site at "mindkind.com" appears to provide an index of links to other domain names that Respondent has registered, through which the Respondent is "showcasing" such domain names in hopes of selling them. The Complainant asserts that, while there may be no illegality in attempting to sell generic domain names, the Respondent should not be allowed to attempt to increase the visitors to its site or the likelihood that others will view its other domain names and accompanying Web sites by use of a domain name containing the Complainants mark.

No response was received from the Respondent with respect to this proceeding.

The Proceeding - Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:

(i) the domain name holders domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and

(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").

The Panelist, however, can only rule in a complainants favor only after the complainant has proven that the above-listed elements are present.

The Complainant has provided sufficient evidence showing that it is the owner of the mark MICROSOFT and variations thereof. A review of the second level domain of the domain name "microsofthealth.com" shows that the domain comprises the Complainants mark MICROSOFT and the word "health" that corresponds to services for which the mark is registered or can be viewed as being associated therewith. The idea suggested by the domain name, in view of the Complainant's many registered marks and long-time use thereof along with its Web site providing health-related information, products and services, is that any possible goods or services offered in association with the domain name and any possible site associated with the domain name are authorized by the Complainant. The Panelist therefore finds that the domain name in issue is confusingly similar to the Complainants mark MICROSOFT and that Element (i) has been satisfied.

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on its evaluation of all of the evidence presented, can demonstrate the holders rights to or legitimate interests in the domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holders 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder is 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.

No evidence has been presented that before notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain name in issue in connection with any type of bona fide offering of goods or services. Rather the Complainant submitted evidence supported by a declaration that the Respondent was using the domain name to redirect Internet users to the Respondents own Web site at "http://www.mindkind.com" where no mention was made of the domain name in issue or a name corresponding to the domain name in issue. In addition, the Complainant submitted evidence that after its counsel notified the Respondent concerning the domain name in issue, the Respondent responded by deactivating the domain name and leaving it inactive. (Footnote 1) Furthermore, such evidence does not support a finding of legitimate noncommercial or fair use of the domain name nor has any evidence been presented to suggest otherwise. Nor has any evidence been presented that the Respondent is commonly known by the domain name in issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has 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 the holders documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holders web site or other online 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 or service on the holders web site or location.

The Panelist finds that the Respondent had actual knowledge of the Complainants mark MICROSOFT and its rights therein at the time the Respondent registered the domain name in issue. This finding is based on: (i) the Complainants mark having a strong reputation and being widely known; (ii) the domain name comprising the Complainants mark and the word "health" which is descriptive of services of one of the Complainants many registrations for the mark MICROSOFT; (iii) the Complainant having a Web site directed to health-related information, services and products; and (iv) the above finding of the Respondent having no rights or legitimate interests in the domain name.

To further support its assertion of bad faith by the Respondent, the Complainant has submitted evidence of the Respondent using the domain name in issue to redirect Internet users to the Respondents own commercial Web site at "http://www.mindkind.com". A review of the pages of the site also shows that no mention was made of the domain name in issue or a name corresponding to the domain name in issue on this site. Such uses accordingly suggest an attempt by the Respondent to profit from the enormous level of Internet traffic from Internet users seeking official Microsoft Web sites by the incorporation of the MICROSOFT mark in the domain name in issue. The Respondents deactivation of the domain name in issue and subsequent inactivity thereof does not negate such prior use.

Based upon such findings and evidence, the Panelist therefore finds that the Respondent has intentionally attempted to attract Internet users to its own site by creating a likelihood of confusion with the Complainants mark, as to the source, sponsorship, affiliation or endorsement of its site or of the products and services having been offered on its site. The Panelist therefore finds that element (iii) has been satisfied.

The Panelist concludes that: (i) the domain name in issue is confusingly similar to the Complainants mark; (ii) the Respondent has no rights or legitimate interests in the domain name; and (iii) the Respondent registered and has used the domain name in bad faith. Accordingly, the Panelist requires that the registration of the domain name in issue be transferred to the Complainant.

Marylee Jenkins
Sole Panelist

Dated: April 20, 2001

Footnote:

1. A recent search result from a query of NSIs Online Payment System database shows that the fee for renewing the registration for the domain name in issue is now due.