[Indexed as:
Microsoft v. Mehrotra]
[Indexed
as: Microsoft.org]
WIPO Arbitration
and Mediation Center
Administrative
Panel Decision
Case No. WIPO
D2000-0053
Commenced:
14 February, 2000
Judgment:
10 April, 2000
Presiding
Panelist: Roderick Thompson
Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use.
Complainant was the registrant of the trademark and service mark MICROSOFT in association with computer software and related services. Complainant claims use of the mark since 1975. Respondent is the administrative contact for the domain MICROSOFT.ORG, whose registrant of record is "If you want this domain, please contact me." Respondent has not contested the allegations of the Complaint and is in default.
Held, Name Transferred to Complainant.
Here, Complainant,
Respondent, and the registrar are all domiciled in the United States. United
States courts have recent experience with similar disputes. The Final
Report of the WIPO Internet Domain Name Process http://ecommerce.wipo.int/domains/
process/ eng/processhome.html [April 30, 1999] envisaged the very situation
before this Panelist. The report stated, "if the parties to the procedure
were resident in one country, the domain was registered through a registrar
in that country and the evidence of bad faith registration and use of the
domain name related to activity in the same country, it would be appropriate
for the decision-maker to refer to the law of the country concerned in
applying [paragraph 4(a) of the Policy]. Accordingly, this Panelist was
able to look to rules and principles of law set out in decisions of the
courts.
The domain
MICROSOFT.ORG is materially identical to the complainants trademark MICROSOFT.
The suffix ".ORG" distinguishes the domain name sites of non-profit organizations
and does not change the likelihood for confusion. The respondent does not
have any legitimate interest in the name MICROSOFT.
Respondents
choice of If you want this domain name, please contact me for the
registrant of the disputed domain name is clear evidence that Respondent
has registered MICROSOFT.ORG for the purpose of selling or otherwise transferring
the domain name registration to Microsoft or some other entity. Further,
Respondent registered other domain names that consist of other companies
trademarks in order to prevent the trademark owners from using them, and
consumers from finding the owners corresponding websites. Finally,
Respondent undertook a scheme to register numerous domain names that are
comprised of well-known trademarks with the intent to misdirect computer
users who are attempting to find the official websites associated with
those trademarks and hijack them to other websites, including pornographic
websites. These acts indicate bad faith registration by the Respondent.
Policies
referred to
Uniform
Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
Network Solutions Inc. Domain Name Registration Agreement Version Number 4.0,
URL: <ftp://rs.internic.net/templates/domain-template.txt>
[01/98]
Panel Decisions referred to
Digitronics
Inventioneering Corporation v. @Six.Net Registered, Case No. D2000-0008
Thompson,
Panelist: -
1. The Parties
Complainant
is Microsoft Corporation, a Washington corporation with a principal place
of business in Redmond, Washington, U.S.. Complainant is represented by
Suzanne V. Wilson, Esq. and James S. Blackburn, Esq. of Blanc Williams
Johnson & Kronstadt, LLP located at 1900 Avenue of the Stars, 17th
Floor, Los Angeles, CA 90067-4403. Respondent is Mr. Amit Mehrotra, an
individual located at 1374 West San Nicolas Drive, Tuscon, AZ 85704-2947.
Mr. Mehrotra is the Administrative, Technical and Zone Contact for the
domain name <microsoft.org>, whose registrant is "If you want this domain,
please contact me."
2. The Domain
Name(s) and Registrar(s)
The domain
name at issue is <microsoft.org>, which domain name is registered with
Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.
3. Procedural
History
A Complaint
was received by the World Intellectual Property Organization Arbitration
and Mediation Center (the "WIPO Center") on February 10, 2000. A Notification
of Complaint and Commencement of Administrative Proceeding was sent by
the WIPO Center to Complainant (facsimile, e-mail and post/courier) and
Respondent (facsimile, e-mail and post/courier), dated February 14, 2000.
On February
14, 2000, a Verification Response was received from the registrar, NSI
which served to: (1) confirm that Network Solutions was in receipt of the
Complaint submitted by Complainant; (2) confirm Network Solutions is the
registrar of the domain name registration; (3) confirm that "If you want
this domain, please contact me" is the current registrant of the MICROSOFT.ORG
domain name registration; (4) provide the full contact details (i.e., postal
address(es), telephone number(s), e-mail address(es)) available in the
registrars WHOIS database for the registrant of the disputed domain name,
the technical contact, the administrative contact and the billing contact;
(5) confirm that Network Solutions 4.0 Service Agreement was in effect
at the time of the original registration of the domain name; (6) confirm
that the domain name MICROSOFT.ORG is in "Active" status.
The February
14, 2000, Verification Response from NSI confirmed by reply e-mail that
the domain name <microsoft.org> is registered with NSI and that Respondent,
"If you want this domain, please contact me," is the current registrant
of that domain name. The Administrative, Technical, Zone and Billing Contact
is listed as "Mehrotra, Am" which is presumed to be Mr. Amit Mehrotra,
listed as Respondent herein.
NSI advised
that the policy in effect at the time of the original registration of the
domain name at issue provided that: Network Solutions, INC. DOMAIN NAME
REGISTRATION AGREEMENT A. Introduction. This domain name registration agreement
("Registration Agreement") is submitted to Network Solutions, INC. ("NSI")
for the purpose of applying for and registering a domain name on the Internet.
If this Registration Agreement is accepted by NSI, and a domain name is
registered in NSIs domain name database and assigned to the Registrant,
Registrant ("Registration") agrees to be bound by the terms of this Registration
Agreement and the terms of NSIs Domain Name Dispute Policy ("Dispute Policy")
which is incorporated herein by reference and made a part of this Registration
Agreement. This Registration Agreement shall be accepted at the offices
of NSI.
* * * * *
C. Dispute
Policy. Registrant agrees, as a condition to submitting this Registration
Agreement, and if the Registration Agreement is accepted by NSI, that the
Registrant shall be found by NSIs current Dispute Policy. The current
version of the Dispute Policy may be found at the InterNIC Registration
Services web site: "http://www.netsol.com/rs/dispute-policy.html."
D. Dispute
Policy Changes or Modifications. Registrant agrees that NSI, in its sole
discretion, may change or modify the Dispute Policy, incorporated by reference
herein, at any time. Registrant agrees that Registrants maintaining the
registration of a domain name after changes or modifications to the Dispute
Policy become effective constitutes Registrants continued acceptance of
these changes or modifications. Registrant agrees that if Registrant considers
any such changes or modifications to be unacceptable, Registrant may request
that the domain name be deleted from the domain name database.
E. Disputes.
Registrant agrees that, if the registration of its domain name is challenged
by any third party, the Registrant will be subject to the provisions specified
in the Dispute Policy.
* * * * *
Q. This is
Domain Name Registration Agreement Version Number 4.0. This Registration
Agreement is only for registrations under top-level domains: COM, ORG,
NET, and EDU. By completing and submitting this Registration Agreement
for consideration and acceptance by NSI, the Registrant agrees that he/she
has read and agrees to be bound by A through D above.
Domain Version
Number: 4.0 [URL ftp://rs.internic.net/templates/ domain-template.txt]
[01/98]
A Formal Requirements
Compliance review was completed by the assigned WIPO Center Case Administrator.
This Panelist has independently determined and agrees with the assessment
of the WIPO Center that the Complaint is in formal compliance with the
requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution
Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the
WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in
effect as of December 1, 1999 (the "Supplemental Rules"). The required
fees for a single-member Panelist were paid in the required amount by Complainant.
No formal
deficiencies having been recorded, on February 14, 2000, a Notification
of Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification") was transmitted to Respondent (with copies to Complainant,
NSI and ICANN), setting a deadline of March 5, 2000, by which Respondent
could file a Response to the Complaint. The Commencement Notification was
transmitted to Respondent by e-mail to the e-mail address indicated in
the Complaint and specified in NSIs Response Verification. In addition,
the Commencement Notification was sent by express courier and transmitted
by facsimile to the addresses listed in the Complaint and confirmed by
NSI. Having reviewed the communications records in the case file, this
Panelist finds that the WIPO Center has discharged its responsibility under
Paragraph 2(a) of the Rules "to employ reasonably available means calculated
to achieve actual notice to Respondent." In addition, it appears that Respondent
received actual notice, an e-mail from "Amit Mehrotra <[email protected]>"
to Complainant dated February 13, 2000, acknowledges receipt of an e-mail
with the Complaint shown as an attachment and "something via postal mail."
On March 7,
2000, having received no Response from the designated Respondent, the WIPO
Center transmitted to the parties by post/courier, facsimile and e-mail
a Notification of Respondent Default. No Response or other document has
been received by the WIPO Center or the Administrative Panel from Respondent
since the Notification of Default.
On March 7,
2000, in view of Complainants designation of a single panelist, the WIPO
Center invited Roderick Thompson to serve as a Panelist in Case No. D2000-0053,
and
transmitted to him a Statement of Acceptance and Request for Declaration
of Impartiality and Independence.
Having received
Roderick Thompsons Statement of Acceptance and Declaration of Impartiality
and Independence, on March 10, 2000, the WIPO Center sent to the parties
a Notification of Panelist Appointment, in which Roderick Thompson was
formally appointed as the Sole Panelist. The Projected Decision Date as
determined by the WIPO Center Transmission of Case file to Administrative
Panel, transmitted to the parties on March 16, 2000, was March 30, 2000.
The Sole Panelist finds that the Administrative Panel was properly constituted
and appointed in accordance with the Rules and WIPO Supplemental Rules.
Respondent
has not made a formal Response to the Complaint. This Panelist, therefore,
finds that Respondent received notice of the Complaint and failed to submit
a Response as required by Rule 5. Respondent is, therefore, in default
and, under Rule 14(a), this Panelist shall "proceed to a decision on the
complaint." Accordingly, this Panelist shall proceed to a decision based
on the allegations in the complaint and shall draw such inferences as are
appropriate from the other documents submitted to WIPO.
4. Factual
Background
The complainant
has provided evidence of the registration of, amongst many other similar
marks, the following mark:
1. Trademark;
Service Mark MICROSOFT, for computer programs and services. International
classes 009 and 042.
Complaint,
Exhibit D, page 70.
The trademark
claims a first use of November 12, 1975. Id. Complainant uses these marks
for MICROSOFT to provide products and services including computer operating
systems, client/server applications, business and consumer productivity
applications, software programming tools, interactive media programs, Internet
platform and development tools, computer input devices, online information
and entertainment services, electronic commerce services, and computer
publications. Complaint 9.
Respondent
is the current registrant of the domain name <microsoft.org>. E-mail
dated February 14, 2000, from NSI to the WIPO Center Case Administrator.
The WHOIS database shows that Respondent is also the Administrative Contact,
Technical Contact and Zone Contact for the domain name <microsoft.org>.
5. Parties
Contentions
A. Complainant
Complainant
contends that; i) Microsoft is the exclusive owner of the trademark rights
in the word "Microsoft"; ii) the current registrant of "microsoft.org"
has no rights or legitimate interest in respect to the domain name; and
iii) the current registrant has registered and used the domain name in
bad faith. On information and belief, Complainant asserts that the official
registrant of the domain name <microsoft.org> is Mr. Amit Mehrotra,
who used the pseudonym "If you want this domain, please contact me" to
register the domain name at issue. Since this assertion by Complainant
is uncontested and there is nothing in the record suggesting otherwise,
this Sole Panelist will operate under that assumption. By obtaining the
domain name <microsoft.org>, Complainant alleges that Respondent registered
the domain name for the purpose of selling or otherwise transferring the
domain name registration to Microsoft or some other entity, and that this
bad faith registration by Respondent is preventing Complainant from using
this domain site for the purposes of furthering its own business interests.
B. Respondent
Respondent
has not contested the allegations of the Complaint and is in default.
6. Discussion
and Findings
A. Applicable
Rules and Principles of Law.
Paragraph
15(a) of the Rules instructs this Panelist as to the principles the Panelist
is to use in rendering its decision: "A Panelist 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." Here, Complainant, Respondent, and the registrar are all domiciled
in the United States. United States courts have recent experience with
similar disputes. The Final Report of the WIPO Internet Domain Name Process
(April 30, 1999 [http://ecommerce.wipo.int/domains/ process/ eng/processhome.html])
envisaged the very situation before this Panelist, stating "if the parties
to the procedure were resident in one country, the domain was registered
through a registrar in that country and the evidence of bad faith registration
and use of the domain name related to activity in the same country, it
would be appropriate for the decision-maker to refer to the law of the
country concerned in applying the definition" of what became paragraph
4(a) of the Policy. Accordingly, this Panelist may look to rules and principles
of law set out in decisions of the courts of the United States in determining
whether the complainant has met its burden.
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 in which the complainant has rights; and,
(ii) that
the respondent has no legitimate interests in respect of the domain name;
and,
(iii) the
domain name has been registered and used in bad faith.
B. Application
of Paragraph 4(a) to the Facts.
The domain
name <microsoft.org> is nearly identical to the trademark registered
and used by Complainant, MICROSOFT. The only difference between the <microsoft.org>
domain name and the MICROSOFT trademark is the suffix ".ORG" an irrelevant
distinction which does not change the likelihood for confusion. The suffix
".ORG" is meant to distinguish the domain name sites to which they attach
as being non-profit organizations. In the same way, the suffix ".COM" is
meant to distinguish commercial sites. Thus, as noted in an earlier Administrative
Panel Decision, the "term .COM...means commercial institution and is
merely the classification of the purpose for which the domain name is being
used." Digitronics Inventioneering Corporation v. @Six.Net Registered,
Case No. D2000-0008, page 5. Applying the same logic here, the domain name
<microsoft.org> is essentially identical to Complainants registered
trademark for the purposes of this proceeding. As Complainant has submitted
(1) multiple Certificates of Registration for the mark MICROSOFT, all registered
with the U.S. Patent and Trademark Principal Register (Complaint, Exhibit
D) and, (2) an NSI WHOIS database search showing Respondent as the <microsoft.org>
domain name registrant (Complaint, Exhibit A), and given that the allegations
of the Complaint are undisputed, Complainant has satisfied its burden under
Paragraph 4 (a)(i).
It is uncontested
that Respondent has no rights or legitimate interests in respect of the
domain name, satisfying the requirement of Paragraph 4 (a)(ii). See Complaint,
14.
In regards
to Paragraph 4(a)(iii) of the Policy, the Complaint alleges that "the name
Respondent has chosen to list as the registrant...If you want this domain
name, please contact me" for the disputed domain name is "clear evidence
that Respondent has registered microsoft.org for the purpose of selling
or otherwise transferring the domain name registration to Microsoft or
some other entity." Complaint, 17. This is uncontested evidence of
bad faith registration under Paragraph 4(b) (i) of the Policy. The Complaint
also alleges that "Respondent has registered other domain names that consist
of other companies trademarks...in order to prevent the trademark owners
from using them, and consumers from finding the owners corresponding websites."
Complaint, 16; Exhibit E. This is also uncontested evidence of bad
faith registration, but under Paragraph 4(b) (ii) of the Policy. Finally,
the Complaint alleges that Respondent has undertaken a scheme to register
"numerous domain names that are comprised of well-known trademarks with
the intent...to misdirect computer users who are attempting to find the
official websites associated with those trademarks and hijack them to other
websites, including pornographic websites." Complaint, 15; Exhibit
F. This, again, is uncontested evidence of bad faith registration under
Paragraph 4(b) (iii) of the Policy. Evidence of either of these Paragraph
4(b) violations is sufficient for this Panelist to determine that a domain
name was registered in bad faith. Here, Complainant has alleged three violations
of the Policy, while Respondent has remained silent in defending against
these accusations. This Sole Panelist must therefore infer from the allegations
presented in the Complaint and the factual support attached therein that
the accusations are true, and that Complainant has met the burden of proof
required under the Policy to support Complainants allegations.
This Panelist
therefore concludes that the circumstances presented in this default proceeding
qualify as sufficient evidence of registration and use in bad faith within
the meaning of Paragraph 4 of the Policy and all applicable legal principles.
7. Decision
For all of
the foregoing reasons, this Panelist decides that the domain name registered
by Respondent <microsoft.org> is identical or confusingly similar to
the trademark in which Complainant has rights, that Respondent has no rights
or legitimate interests in respect of the domain name, and that the Respondents
domain name has been registered and is being used in bad faith. Accordingly,
pursuant to Paragraph 4i of the Policy, this Panelist requires that the
registration of the domain name <microsoft.org> be transferred to Complainant.
Domain Name Transferred