Microsoft Corporation v.
Domain Registration
Claim Number: FA0612000877979
PARTIES
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microssoft.com>, registered with Bizcn.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 29, 2006; the
National Arbitration Forum received a hard copy of the Complaint on January 2, 2007.
On January 9, 2007, Bizcn.com, Inc. confirmed by e-mail to the
National Arbi
On January 9, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 29, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@microssoft.com by
e-mail.
A timely Response was received and determined to be complete on January 29, 2007.
A timely Additional Submission from Complainant was received on
February 2, 2007 and determined to be complete pursuant to Supplemental Rule 7.
A timely Additional Submission from Respondent was received on February
6, 2007 and determined to be complete pursuant to Supplemental Rule 7.
On February 7, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
·
The disputed domain name is unquestionably confusingly
similar to Complainant’s famous Microsoft
mark in use for approximately 30 years, as it is simply a misspelled variation
of Complainant’s famous mark, adding an ex
· Respondent has no rights or legitimate interests in the disputed domain name.
·
Respondent registered the domain name in bad
faith, as it was on notice of Complainant’s rights in the Microsoft mark when it registered the
domain name.
·
Respondent has been using the disputed domain
name in bad faith as to at
B. Respondent
·
The domain name is not similar to Complainant’s
registered
·
Most of the Philippine regis
·
Respondent has rights and legitimate interests
in the disputed domain name as upon regis
·
As a registrant, Respondent is an authorized
reseller/dealer of Microsoft Products in the
· The disputed domain name has not been registered and has not been used by Respondent in bad faith.
· Complainant is guilty of Reverse Domain Hijacking.
C. Complainant’s Additional Submission
Complainant further asserts by an Additional Submission
that:
·
Respondent fails to present any evidence to support
the argument that the disputed domain name is intended to mean MICROS SOFT
rather than MICROSOFT.
·
Respondent merely made allegations to the existence
of rights and legitimate interests in the disputed domain name and did not
present any evidence supporting such allegations.
·
Respondent is using the disputed domain name in
order to attract Internet users to Respondent’s website for commercial gain.
D. Respondent’s Additional Submission
In response to Complainant’s further assertions, Respondent contends
that:
·
The disputed domain name is intended to be read
as two separate words, MICROS and SOFT, but due to the res
·
Complainant
has
·
Respondent’s
offering of our services via email using the one page site since regis
·
The parking of the disputed domain name to NameDrive
does not bring profit, NameDrive pays a minimum of $20.00 through Paypal, and
Paypal users in the
· Complainant is guilty of Reverse Domain Hijacking.
FINDINGS
Since 1975, Complainant has manufactured and sold computer software and
related products and services. Complainant
is the owner of numerous proprietary marks for computer software and related
goods and services and also the owner of more than 30
The essential issue on which the
Panel is called, in this case, to decide is whether the disputed domain name is
confusingly similar with the Complainant’s
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds, like other Panels
before it, that Complainant has established rights in the MICROSOFT trademark
for purposes of Policy ¶ 4(a)(i) and that the mark is internationally famous
and distinctive. See Microsoft Corp. v. Pileri,
FA 570110 (Nat. Arb. Forum Nov. 10, 2005); see
also Microsoft Corp. v. Thompson, D2004-1097 (WIPO Apr. 14, 2005) (“Several
previous panels operating under the jurisdiction of the Policy have concluded
that the Complainant’s MICROSOFT
Respondent’s contentions as to the lack
of identity between the owner of the Philippine mark regis
As Complainant’s trademark is an internationally famous and distinctive mark, the Panel considers that the <microssoft.com> domain name is simply a misspelled variation of the MICROSOFT mark, as it differs from the mark by one letter. Such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name, a common misspelling of the complainant’s VALPAK mark, to be confusingly similar to the mark under Policy ¶ 4(a)(i).); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)).
In addition, Respondent’s
allegations as to the genericness of the words comprised in the disputed domain
name cannot be accepted. The formation
of the disputed domain name from Complainant’s
Rights or Legitimate Interests
The Panel considers that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the <microssoft.com> domain name under Policy ¶ 4(a)(ii) and that Respondent failed to rebut such showing.
Respondent in its Response, declares expressly that the services on the website to which the disputed domain name resolves are not offered under Complainant’s mark or based on Complainant’s instructions and that it is not commonly known for such offering by the <microssoft.com> domain name.
Respondent is using the <microssoft.com> domain name to maintain a pay-per-click website with links to various content, including the websites of Complainant’s competitors. It is irrelevant, in the opinion of the Panel, if it has made only a small amount of money in click through revenues.
Respondent argues that this is a temporary solution before it gets ready to shift the website to a full site and the Wayback Machine offers a history of bona fide offering of goods and services under the disputed domain name. The Panel performed a check with the Wayback Machine – Internet Archives, and the records of the website to which the disputed domain name resolves show for 2001, 2002, 2003 and part of 2004, a site on which it was displayed an offer to sale the disputed domain name. Such conduct cannot be considered bona fide offering of goods and services in the sense of the Policy.
In addition, Respondent has engaged in typosquatting, which provides additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Registration and Use in Bad Faith
The Panel finds that Complainant registered and has been using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
It is obvious the intent of Respondent to take advantage of the confusing similarity between the <microssoft.com> domain name and Complainant’s MICROSOFT mark in order to profit from the goodwill associated with the mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
In addition, Respondent’s misspelling of Complainant’s MICROSOFT mark in the <microssoft.com> domain name indicates that Respondent is typosquatting, which is a further indication of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark with intent to intercept internet users from Complainant’s web site, given the fact that Complainant’s website is a popular website and the Disputed Domain Name is a misspelling of the Mark which is highly likely to occur. This typosquatting is evidence of bad faith.”); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Reverse Domain Hijacking
Having in consideration the finding above, the Panel considers that the reverse domain hijacking allegations are unfounded in this case.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microssoft.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka ,
Panelist
Dated: February 20, 2007
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