National Arbitration Forum




Microsoft Corporation v. Domain Registration Philippines

Claim Number: FA0612000877979



Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225, USA.  Respondent is Domain Registration Philippines (“Respondent”), represented by Engr. Joseph Oliver E. Agalabia, of Domain Registration Philippines, Suite 812 8/F Emerald Tower, JP Rizal cor P Tuazon Proj. 4, QC, Metro Manila 1109 Philippines.




The domain name at issue is <>, registered with, Inc.



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.



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,, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with, Inc. and that the Respondent is the current registrant of the name., Inc. has verified if the Respondent is bound by the, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


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 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.



Complainant requests that the domain name be transferred from Respondent to Complainant.



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 extra “s” after “micro.” 

·        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 attract internet users to its website for its own commercial gain, through NameDrive, a parking service that places targeted advertising on the site, generating click through revenues to Respondent. 


B.  Respondent


·        The domain name is not similar to Complainant’s registered trademark, as it consists of 2 separate common words, MICROS and SOFT, joined together.

·        Most of the Philippine registrations Complainant presented as evidences are not named after it but to “MICROSFT” which is technically not Complainant and one of Complainant’s trademark claims has even been cancelled.

·        Respondent has rights and legitimate interests in the disputed domain name as upon registration it has used the domain name in relation to a bona fide offering of services—registration of domain names and sale of websites.  The pointing of the domain name to NameDrive and/or other search engine pages is a change of plan during the development of Respondent’s website, until Respondent completes shift of the website to a full site.

·        As a registrant, Respondent is an authorized reseller/dealer of Microsoft Products in the Philippines through Complainant’s authorized distributor although he only offers the products to the offline market and not use it in the disputed domain name.

·        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 restriction of spaces in domain registrations Respondent registered <>, which is completely different from Complainant’s registered mark, both in its spelling, phonetic nature and use.

·        Complainant has trademark protection for only three classes and descriptions, which are completely different from what Respondent offers.

·        Respondent’s offering of our services via email using the one page site since registration shows perfunctory preparations in using the domain name.

·        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 Philippines may only send payments and are not able to receive any payments due to their restrictions.  Respondent has to wait for more than eight years just to afford a minimum payout.

·        Complainant is guilty of Reverse Domain Hijacking.



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 trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office for the trademark MICROSOFT.  Complainant holds more than 500 trademark and service mark applications and registrations for the mark MICROSOFT throughout the world (collectively, the “Microsoft Mark”).  MICROSOFT is an internationally famous trademark, and was the second most valuable brand in the world in 2004.  See The Top 100 Brands, BusinessWeek, August 2, 2004, at 68.


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 trademark.  The Panel considers that even if the disputed domain name comprises two generic words MICROS and SOFT, the combination of the two generic words turns into a word confusingly similar to Complainant’s trademark.  



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 trademark is internationally famous. The Panel readily subscribes to these previous panels’ findings.” (citations omitted)); see also Microsoft Corp. v. Lybrand, D2005-0020 (WIPO Mar. 18, 2005) (“The uncontested evidence indicates plainly that MICROSOFT is a famous mark, and indeed, several previous WIPO panels have recognized it as such.” (citing Microsoft Corp. v. Tumakov, D2002-1039 (WIPO Dec. 19, 2002)); see also Microsoft Corp. v., D2002-0769 (WIPO Oct. 4, 2002); see also Microsoft Corp. v. Homer, D2002-0029 (WIPO Feb. 27, 2002); see also Microsoft Corp. v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum Oct. 6, 2004) (“Complainant’s MICROSOFT mark has become distinctive, well-known and has developed considerable goodwill.”).


Respondent’s contentions as to the lack of identity between the owner of the Philippine mark registrations and Complainant are irrelevant under this case.  There are sufficient elements to form the opinion of the Panel that Complainant enjoys internationally the protection offered by the use and registration of its famous mark.  In addition, the Panel agrees with Complainant that it is apparent that the word “Microsft” is a typographical error in the Philippine trademark records.


As Complainant’s trademark is an internationally famous and distinctive mark, the Panel considers that the <> 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 <> 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 <> 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 trademark by adding a letter in the middle of the word does not make the domain name distinctive from Complainant’s trademark. 


Rights or Legitimate Interests


The Panel considers that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the <> 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 <> domain name.


Respondent is using the <> 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 <> 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 <>, <>, and <> 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 <> 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 <> 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 <> 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.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.




Beatrice Onica Jarka , Panelist
Dated: February 20, 2007







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