v.
Microsof.com aka Tarek Ahmed
[Indexed as: Microsoft v. Tarak Ahmed]
[Indexed as: MICROSOF.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: D2000-0548
Commenced: 15 June 2000
Judgement: 21 July 2000
Presiding Panelist: Frederick M. Abbott
Domain Name - Domain name dispute resolution policy - Trademark Service mark Word mark - Formative mark - Identical - Confusingly similar - Bad faith registration - Bad faith use - No rights or legitimate interest Unfair use- Disrupting competitor's business - Website deliberately designed to confuse Internet users and consumers Domain name hijacking.
Complainant is the holder of a substantial number of trademark and service mark registrations on the Principal Register at the USPTO for MICROSOFT as a word mark and as formative marks. Complainant has registered and is using the domain names microsoft.com and microsoft.net.
Respondent registered and is using the domain name microsof.com, a misspelled version of Complainants domain name. Respondent used Complainants homepage source code for significant parts of its own website, altering only a single letter in Complainants name. Respondent failed to respond to this matter
Held, Name Transferred to Complainant.
The disputed domain name is confusingly similar to Complainants trademark. Respondents domain name, microsof.com. The term microsof is very similar to the term microsoft in its visual impression. Pronunciation of the two terms is very similar. An Internet user or consumer viewing the term microsof is likely to confuse it with the term microsoft. Complainants trademark is immediately recognizable by the public, contributing to the likelihood of confusion.
Respondent has failed to establish rights or legitimate interests
in the disputed domain name. There is no evidence present that Respondent
has been commonly known by the disputed domain name, or that Respondent
has made noncommercial or fair use of the name. By using a domain
name and establishing a website deliberately designed to confuse Internet
users and consumers regarding the identity of the seller of the goods and
services, Respondent has not undertaken a bona fide or good faith offering
of the goods and services. Respondents domain name directed Internet
users to a website designed to perpetuate confusion to suggest to consumers
that they were purchasing goods and services directly from Complainant.
Respondent has registered a domain name that Internet users are
likely to employ inadvertently as they misspell Complainants domain name
when attempting to locate Complainants website. Respondents choice of
a misspelled version of Complainants domain name was deliberate, as evidenced,
inter alia, by its use of Complainants homepage source code for significant
parts of its own website, altering only a single letter in Complainants
name. Respondent created a website homepage that is substantially similar
to Complainants, and that is likely to confuse consumers as to the sponsorship
of Respondents web site. This constitutes bad faith
The Panel finds that the Respondent has engaged in abusive registration of the domain name microsof.com.
Policies referred to
ICANN Uniform Domain Name Dispute Policy
Registration Agreements referred to
Network Solutions Service Agreement
Panel Decisions referred to
Educational Testing Service v. TOEFL, Case No. D2000-0044 (WIPO March
16, 2000)
Cases referred to
Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999)
Panavision Intl, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).
Brookfield Communications, Inc. v. West Coast Entertainment Corp.,
174 F.3d 1036 (9th Cir.1999).
Acts referred to:
Lanham Act, 15 U.S.C. 1125(a)
Frederick M. Abbott, Panelist: -
1. The Parties
The Complainant is Microsoft Corporation, a corporation organized in
the State of Washington, United States of America (USA), with place of
business in Redmond, Washington, USA.
The Respondent is microsof.com, also known as Tarek Ahmed, with address
in Brooklyn, New York, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "microsof.com".
The registrar of the disputed domain name is Network Solutions, Inc.,
with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is
as follows:
a) Complainant initiated the proceeding by the filing of a complaint
via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO")
on June 3, 2000, and by courier mail received by WIPO on June 6, 2000.
Payment by Complainant of the requisite filing fees accompanied the courier
mailing. On June 6, 2000, WIPO transmitted a Request for Registrar Verification
to the registrar, Network Solutions, Inc. On June 14, 2000, WIPO completed
its formal filing compliance requirements checklist.
b) On June 15, 2000, WIPO transmitted notification of the complaint
and commencement of the proceeding to Respondent via e-mail, telefax and
courier mail. Notification was also transmitted via e-mail, telefax and
courier mail to Respondents Technical Contact. Respondent subsequently
transmitted an e-mail request to WIPO regarding the procedure for filing
a response, and was advised to consult WIPOs website for information.
c) On July 5, 2000, WIPO transmitted notification to Respondent (and
its Technical Contact) of its default in responding to the complaint via
e-mail, telefax and courier mail.
d) On July 6, 2000, WIPO invited the undersigned to serve as panelist
in this administrative proceeding, subject to receipt of an executed Statement
of Acceptance and Declaration of Impartiality and Independence ("Statement
and Declaration"). On July 6, 2000, the undersigned transmitted by fax
the executed Statement and Declaration to WIPO.
e) On July 7, 2000, Complainant and Respondent were notified by WIPO
of the appointment of the undersigned sole panelist as the Administrative
Panel (the "Panel") in this matter. WIPO notified the Panel that, absent
exceptional circumstances, it would be required to forward its decision
to WIPO by July 20, 2000. On July 7, 2000, the Panel received an electronic
file in this matter by e-mail from WIPO. The Panel subsequently received
a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent
regarding further submissions, waivers or extensions of deadlines, and
the Panel has not found it necessary to request any further information
from the parties (taking note of Respondents default in responding to
the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of a substantial number of trademark and
service mark registrations on the Principal Register at the USPTO for "MICROSOFT"
as a word mark, including No. 1200236, dated July 6, 1982, covering computer
programs and computer programming services; No. 1252912, dated October
4, 1983, covering, inter alia, computer hardware and software manuals;
No. 1259874, dated December 6, 1983, covering, inter alia, computer programs
recorded on tapes and diskettes; No. 1684033, dated April 21, 1992, covering
education and training services; No. 1966382, covering telecommunications
services, and; No. 2163597, covering, inter alia, computers and component
parts (Complaint, para. 10 and Exhibit D). These registrations are valid
and subsisting. The "MICROSOFT" mark has been used in commerce since at
least 1982 (based on the foregoing registrations), and continues to be
used in commerce. The MICROSOFT mark has been widely advertised and is
well known.
Complainant is the holder of a substantial number of trademark and
service mark registrations on the Principal Register at the USPTO for "MICROSOFT-"
formative marks, including "MICROSOFT WINDOWS", dated February 27, 1996,
covering, inter alia, computers and components, and computer programs in
the field of graphical applications; "MICROSOFT ACCESS", dated December
22, 1992, covering, inter alia, computer programs for use with databases;
and "MICROSOFT WINDOWS NT", dated April 25, 1995, covering, inter alia,
computer programs in the nature of operating system programs. These registrations
are valid and subsisting, and are used in commerce.
Complainant has registered and is using the domain names "microsoft.com"
and "microsoft.net" in connection with a website that promotes and offers
its products for sale. (Complaint, para. 12 and Exhibit E). The "www.microsoft.com"
website is identified on its homepage by the name "microsoft.com" (id.)
According to the registrars verification response to WIPO, dated June
8, 2000, "microsof.com" is the listed registrant of the domain name "MICROSOF.COM".
The Administrative Contact is "Tarek, Ahmed". The addresses listed for
the registrant and the Administrative Contact are identical. A Network
Solutions WHOIS database search indicates that the record of registration
was created on March 6, 2000, and that the record was last updated on March
27, 2000 (Complaint, Exhibit A).
A printout, dated May 18, 2000, of the web page identified by the address
"www.microsof.com", includes a banner identifying it as the "microsof.com"
homepage. The webpage prominently displays two Microsoft program box covers,
between which is displayed a box cover for Red Hat Linux 6.1 Deluxe software.
Beneath this display is a list of "Top Ten Microsoft Titles". Complainant
indicates that in the creation of the title and description of its "microsof.com"
homepage, Respondent copied the source code (title, description, keywords)
from Complainants "microsoft.com" homepage, only omitting the "t". Complainant
has provided printouts of the source code (or "html code") for the two
home pages (Complaint, para. 13-14, 18, and Exhibits F and H), and these
printouts indicate a substantial identity of the introductory elements
of the source code for the two home pages. Respondents homepage states
that "We offer a wide variety of software, hardware, and valuable services
to help your business grow. For your added convenience, selected software
is available for immediate download" (Complaint, Exhibit G).
By e-mail of May 16, 2000, Complainant requested that Respondent transfer
the disputed domain name to it since Respondents name is confusingly similar
to Complainants trademark and its website may create consumer confusion.
Complainant offered "to reimburse you for the registration fees paid for
the domain name." Complainant also requested that Respondent redesign its
website "to remove any elements that might confuse Internet users into
believe [sic] that your website is endorsed, authorized or sponsored by,
or affiliated with, Microsoft Specifically, we request that all references
to "microsof.com" be removed
" (E-mail from James Blackburn to [email protected]
of May 16, 2000, Complaint, Exhibit I). Respondents e-mail reply stated:
"I understand your concern with how MY site is used, however the registration
fees offer you make is quite humorous. I could easily have gone [sic] a
wrong
direction, such as promoting porn, however, I didnt because I am a user
and developer of Microsoft products. I am right now seeking funding for
a development project that in conjunction with microsof.com will definitely
enhance Micorsofts customer relations I have already raised substantial
capital and am willing to talk in [sic] how I can partner with Microsoft,
however I will say again that I am not interested in "reimbursement" of
registration fees. I would like to add that we know how Microsoft public
image is of late and I think as a Microsoft representative you should contact
Microsoft and tell them my situation and return with a much better offer.
(E-mail from Tarek Ahmed to James Blackburn, dated May 16, 2000, id.)"
The hardcopy file transmitted by WIPO to the Panel includes a printout
from Respondents website ("www.microsof.com"), dated June 6, 2000. It
is headed (upper left) in small print "Microsoft is trying to rob me."
The body of the web page states in large block capital letters, "THIS IS
NOT MICROSOFT.COM SITE. ALL I DID WAS SELL PRODUCTS AND SUPPORT MICROSOFT
PRODUCTS. NOW THEY WANT TO TAKE AWAY MY DOMAIN NAME. WHAT HAPPENED TO FREE
TRADE???????" This is followed in small print "If anyone can help me please
send some information to
@hotmail.com"
The Service Agreement in effect between Respondent and Network Solutions
subjects Respondent to Network Solutions dispute settlement policy, the
Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August
26, 1999, and with implementing documents approved by ICANN on October
24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy")
requires that domain name registrants submit to a mandatory administrative
proceeding conducted by an approved dispute resolution service provider,
of which WIPO is one, regarding allegations of abusive domain name registration
(Policy, para. 4(a)).
5. Parties Contentions
A. Complainant
Complainant states:
"A. Microsofts Ownership of the Microsoft Mark
8. 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 educational institutions.
9. Microsofts products and services include 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.
10. In connection with these goods and services, Microsoft owns, among
other trademarks, the world famous trademark Microsoft (the Microsoft
Mark). 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 materials. Copies of a number of
Microsofts federal trademark registrations for the Microsoft Mark are
attached
.
11. Microsoft has spent an enormous amount of 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 famous worldwide,
and Microsoft has developed an enormous amount of goodwill in the mark.
12 In connection with the Microsoft Mark, Microsoft has established
an Internet website which can be reached through domain names comprised
of the Microsoft Mark, including microsoft.com and microsoft.net (the
Microsoft Website). The Microsoft Website allows computer users throughout
the United States and the world to access information regarding Microsoft
and its products and to use and enjoy the Internet services provided by
Microsoft. The visual portion of the homepage of the Microsoft Website
contains a light blue border at the top which identifies the websites
name microsoft.com. The text of the page includes links to information
about Microsoft and its products and links to websites where Microsoft
products can be purchased. A copy of the homepage of the Microsoft Website
is attached
.
13 In addition to the visual portion of a website, every website contains
source code or html code which is the code that determines what the
visual portion of the site will look like. The html code for a webpage
also may contain non-visual aspects, including its title, description and
keywords which are used by some search engines to determine whether a particular
webpage is relevant to an Internet users search engine query. The html
title, description and/or keywords also may be seen by an Internet user
when they are displayed on a search engines results ranking page listing
the particular webpage. Finally, the html title of the webpage may appear
in the Internet users browser when the page is displayed or when it is
printed. The content of the html code is determined by the website owner
and developer.
14 The html code for home page of the Microsoft Website includes the
title Welcome to Microsofts Homepage and the following description:
The entry page to Microsofts Website. Find software, solutions and answers.
Support, and Microsoft news.
The keywords in the html code for the Microsoft Website are: products;
headlines; downloads; news; Web site; whats new; solutions; services;
software; contests; corporate news. A copy of the source code for the
home page of the Microsoft website is attached
.
B. Respondent Has No Legitimate Interest in the Domain Name microsof.com
15 Respondent has no connection or affiliation with Microsoft, 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. Respondent is not
an authorized dealer or reseller of Microsoft products or services. Moreover,
Microsoft is unaware of any legitimate right Respondent could have in the
word microsof, which is confusingly similar to its own famous trademark.
Thus, Respondent has no legitimate interest in microsof.com and has made
no good faith or fair use of the domain name microsof.com.
C. Respondent Has Registered and Used microsof.com in Bad Faith
16 Respondent registered microsof.com because it is comprised of
the world-famous Microsoft trademark, with the intent either to sell this
domain name to Microsoft, or to misdirect computer users who are attempting
to find the official Microsoft Websites associated with this trademark
and hijack them to respondents own website.
17 First, Respondent used microsof.com to divert Internet users seeking
an official Microsoft website to his 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 mark. 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.) Respondent has attempted to take advantage of, for his own commercial
advantage, the Internet user behavior pattern identified in Panavision.
It is very likely that many Internet users seeking to locate the official
Microsoft website on the Internet will type microsoft.com into their
Internet browsers. As noted above, these Internet users will have correctly
identified the location of the Microsoft Website. However, a certain proportion
of these users undoubtedly will misspell Microsoft or make a typographical
error while typing Microsoft into their Internet browsers by inadvertently
omitting the t -- the last letter -- from the Microsoft mark. Thus, some
Internet users seeking to find microsoft.com will mistakenly arrive at
Respondents website at microsof.com. As described more fully below,
these individuals will not know why they did not reach the official Microsoft
website and a significant number will be confused into believing that Respondents
website is the official Microsoft Website.
18 Second, rather than dispel any confusion, the visual content of
and html code for Respondents website at microsof.com has been deliberately
designed to create consumer confusion. Courts have recognized that the
use of a domain name confusingly similar to anothers trademark and/or
the inclusion of anothers trademark in the metatags for a website can
constitute trademark infringement and violate Section 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a), and other federal and state laws. See Brookfield
Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th
Cir. 1999). As set forth above, on its websites, Microsoft offers its computer
software products for sale. Internet users who accidentally arrive at Respondents
website by mistakenly omitting the t from microsoft.com will see the
homepage for microsof.com. The visual portion of the homepage of microsof.com
has a blue border at the top with the title microsof.com and includes
pictures and descriptions of official Microsoft products. Thus, Internet
users who see the Microsoft products on respondents website are likely
to remain confused regarding whether they have reached an official Microsoft
website. Also, even if the Internet user realizes that he or she is not
at the official Microsoft website, because microsof.com offers Microsoft
software products and services, these users are likely to be confused regarding
Microsofts affiliation with, connection or sponsorship of microsof.com,
or patronize Respondents website instead of an official Microsoft website.
A copy of the printout from the homepage of the microsof.com web page
is attached
.
19 The non-visual portions of the html code for Respondents website
also is designed to create confusion between microsof.com and the Microsoft
website. In fact, a comparison for the html code for the two websites reveals
that Respondent has simply copied the title, description and keywords from
the Microsoft Website into the microsof.com site except that he has omitted
the final letter -- t -- from the word microsoft wherever it appears.
For example, html title of Respondents website is Welcome to Microsofs
Homepage. The html description of the microsof.com site is:
The entry page to Microsofs Web site. Find software, solutions and
answers. Support, and Microsof news.
Finally, the html keywords used by Respondent are copied from the Microsoft
Website. A copy of the html code for the microsof.com website is attached
.
20 Moreover, respondents microsof.com website is offering for sale
non-Microsoft and competing products and services. By doing so, Respondent
is creating a likelihood that consumers will be confused regarding Microsofts
affiliation or connection with, or sponsorship or endorsement of those
products. For example, Respondents website offers for sale products created
by Microsofts competitors, including, for example, Red Hat Linux 6.1.
See Exhibit
. Because these products are being sold side-by-side with
Microsoft products, on a website located at the domain name microsof.com,
consumers may believe that there is a connection between Microsoft and
Red Hat Linux when, in fact, none exists.
21 As mentioned above, microsof is a common typographical misspelling
of Microsoft. Respondent has registered and used this typographical misspelling
of the Microsoft Marks to divert Internet traffic for his own commercial
advantage. By prominently displaying Microsoft products on the first page
of the microsof.com website, Respondent is further confusing Internet
users into believing that they have reached an official Microsoft site.
Alternatively, even if Internet users realize that they have not arrived
at an official Microsoft site, to the extent they were seeking products
and services available through Respondents website, they may decide to
patronize Respondents website instead of continuing their search for an
official Microsoft website.
22 Finally, Respondent has used the domain name microsof.com in bad
faith by offering to sell it to Microsoft. On May 16, 2000, Microsofts
counsel sent an email letter to Respondent concerning Respondents bad-faith
registration and use of the microsof.com domain name, and requesting
that Respondent voluntarily agree to transfer the domain name to Microsoft.
Respondent replied by email later that day. A copy of the email letter
and response is attached
. In his response, Respondent made a bald-faced
threat to take further action to harm Microsoft, such as by redirecting
the domain name to a pornographic website, and demanded that Microsoft
make him a much better offer for transfer of the domain name to Microsoft:
I understand your concern with how MY site is used, however the registration
fees offer you make is quite humorous. I could easily have gone a wrong
direction, such as promoting porn, however, I didnt because I am a user
and developer of Microsoft products.
[. . . .] I would like to add that we know how Microsoft public image
is of late and I think as a Microsoft representative you should contact
Microsoft and tell them my situation and return with a much better offer.
[Emphasis added].
Respondents thinly veiled threat to use the domain name to further
damage Microsoft if it does not pay him a substantial sum for transfer
of the domain name is a clear case of bad-faith use of the domain name.
MICROSOFTS ATTEMPT TO RESOLVE THIS DISPUTE INFORMALLY
23 As set forth above, Microsofts counsel has attempted to resolve
this matter informally with Respondent by requesting that Respondent voluntarily
agree to transfer the domain name to Microsoft. Respondent rejected Microsofts
offer." (Complaint)
Complainant requests that the Panel ask the Registrar to transfer the
domain name "microsof.com" from Respondent to it (id., para. 24).
B. Respondent
Respondent did not formally reply to the complaint. However, subsequent
to the filing of the complaint, Respondents website posted a message asserting
that Respondents sole action was to "sell products and support Microsoft
products". In view of the inclusion of this message in the case file, the
Panel will treat it as Respondents assertion of a legitimate interest
in use of the disputed domain name for the purpose of offering and selling
software products over the Internet, including those of Complainant and
other parties.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted
by the Internet Corporation for Assigned Names and Numbers (ICANN) on August
26, 1999 (with implementing documents approved on October 24, 1999), is
addressed to resolving disputes concerning allegations of abusive domain
name registration. This sole panelist has in an earlier decision discussed
the background of the administrative panel procedure, and the legal characteristics
of domain names, and refers to this earlier decision for such discussion
1. The Panel will confine itself to making determinations necessary to
resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental
due process requirements be met. Such requirements include that a respondent
have notice of proceedings that may substantially affect its rights. The
Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules"), establish procedures intended to assure that respondents
are given adequate notice of proceedings commenced against them, and a
reasonable opportunity to respond
(see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably
necessary to notify the Respondent of the filing of the complaint and initiation
of these proceedings, and that the failure of the Respondent to furnish
a reply is not due to any omission by WIPO. Respondent acknowledged receipt
of the complaint and initiation of these proceedings by its e-mail message
to WIPO (see Procedural History, supra).
Paragraph 4(a) of the Policy sets forth three elements that must be
established by a Complainant to merit a finding that a Respondent has engaged
in abusive domain name registration, and to obtain relief. These elements
are that:
(i) Respondents domain name is identical or confusingly similar to
a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of
the domain name; and
(iii) Respondents domain name has been registered and is being used
in bad faith.
Each of the aforesaid three elements must be proved by a complainant
to warrant relief.
Because the Respondent has defaulted in providing a response to the
allegations of Complainant, the Panel is directed to decide this administrative
proceeding on the basis of the complaint (Rules, para. 14(a)), and certain
factual conclusions may be drawn by the Panel on the basis of Complainants
undisputed representations (id., para. 15(a)).
Complainant is the holder of trademark and service mark registrations
for the term "MICROSOFT" and for several "MICROSOFT"-formative marks, including
"MICROSOFT ACCESS", "MICROSOFT WINDOWS" and MICROSOFT WINDOWS NT", in the
United States and is using those marks in commerce (see Factual Background,
supra). Complainants registration of the "MICROSOFT" marks on the Principal
Register at the PTO establishes a presumption of their validity in U.S.
law 2. The Panel determines that Complainant has rights in the trademarks
"MICROSOFT", "MICROSOFT ACCESS", "MICROSOFT WINDOWS" and "MICROSOFT WINDOWS
NT". Based on the July 6, 1982, date of Complainants registration of the
trademark "MICROSOFT" (the earliest of those submitted in this proceeding
by Complainant), and without prejudice to whether Complainant may hold
earlier-arising rights in the mark, the Panel determines that Complainants
rights in the trademark arose prior to Respondents registration, on March
6, 2000, of the disputed domain name "microsof.com" 3.
Complainants "MICROSOFT" mark is well known throughout the world.
Complainant has registered and uses the domain name "microsoft.com",
inter alia, to advertise, sell, and provide customer support for its products.
Complainants principal website is identified by a banner as "microsoft.com".
Respondent has registered the domain name "microsof.com". This name
is identical to Complainants trademark "Microsoft", except that (1) the
domain name adds the generic top-level domain name ".com", (2) the domain
name employs lower case letters, while the trademark is generally used
with an initial capital letter, and (3) the domain name omits the letter
"t" at the end of the mark.
The addition of the generic top-level domain name (gTLD) ".com" is
without legal significance from the standpoint of comparing "microsof.com"
to "Microsoft" since use of a gTLD is required of domain name registrants,
".com" is one of only several such gTLDs, and ".com" does not serve to
identify a specific enterprise as a source of goods or services 4. Insofar
as domain names are not case sensitive, the Panel concludes that use of
the lower case letter format in "microsof.com" is without legal significance
from the standpoint of comparing that name to "Microsoft" 5.
The term "microsof" is very similar to "microsoft" in its visual impression.
Pronunciation of the two terms is very similar. An Internet user or consumer
viewing the term "microsof" (or "microsof.com") is likely to confuse it
with the term "microsoft" (or "microsoft.com"). Complainants mark "Microsoft"
is undoubtedly strong it is immediately recognizable by the public
and this factor contributes to the likelihood of confusion 6. The Panel
determines that the disputed domain name "microsof.com" is confusingly
similar to "Microsoft" in the sense of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant
of a domain name that is identical or confusingly similar to a trademark
in which the Complainant has rights, and it has thus established the first
of the three elements necessary to a finding that Respondent has engaged
in abusive domain name registration.
The second element of a claim of abusive domain registration is that
the Respondent has no rights or legitimate interests in respect of the
domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways
in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation,
if found by the Panel to be proved based on its evaluation of all evidence
presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you 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 (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 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." (Policy,
para. 4(c)).
There is no evidence on the record of this proceeding to suggest that
Respondent has been commonly known by the disputed domain name, or that
Respondent has made noncommercial or fair use of the name. It appears from
the record, however, that Respondent has offered to sell goods and provide
services on a website identified by the "microsof.com" domain name.
By using a domain name and establishing a website deliberately designed
to confuse Internet users and consumers regarding the identity of the seller
of the goods and services, Respondent has not undertaken a bona fide or
good faith offering of the goods and services. Respondents goods may (or
may not) be genuine, but consumers have a right to purchase goods and services
from the seller of their own choosing. Respondent offered to sell goods
and services under a domain name confusingly similar to Complainants mark.
That domain name directed Internet users to a website designed to perpetuate
confusion to suggest to consumers that they were purchasing goods and
services directly from Complainant. This was not a bona fide offering of
goods and services by Respondent.
Respondent adopted one of the worlds best-known trademarks and service
marks as its domain name (omitting one letter). In establishing its website,
Respondent appears to have used the literal source code of Complainants
website. Respondent was undoubtedly aware of Complainants interest in
its mark, including its use as the principal identifier for Complainants
own website. Respondent designed its website to convey the visual impression
of Complainants website.
On the record of this proceeding, Respondent did not undertake a bona
fide offering for sale of goods or services before notice of the dispute
Respondent offered its products and services under the false pretense of
being Complainant.
Respondent has failed to establish rights or legitimate interests in
the disputed domain name. Thus, Complainant has established the second
element necessary to prevail on its claim that Respondent has engaged in
abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular
but without limitation", be evidence of bad faith (Policy, para. 4(b)).
Among these circumstances are that a respondent "by using the domain name,
[has] intentionally attempted to attract, for commercial gain, Internet
users to [its] web site or other on-line location, by creating a likelihood
of confusion with the complainants mark as to the source, sponsorship,
affiliation, or endorsement of [respondents] web site or location of a
product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent has registered a domain name that Internet users are likely
to employ inadvertently as they misspell Complainants domain name when
attempting to locate Complainants website. Respondents choice of a misspelled
version of Complainants domain name was deliberate, as evidenced, inter
alia, by its use of Complainants homepage source code for significant
parts of its own website, altering only a single letter in Complainants
name. Respondent created a website homepage that is substantially similar
to Complainants, and that is likely to confuse consumers as to the sponsorship
of Respondents web site. This constitutes bad faith within the meaning
of paragraph 4(b)(iv) of the Policy.
Complainant has established the third and final element necessary for
a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain
name "microsof.com" to the Complainant.
7. Decision
Based on its finding that the Respondent, microsof.com, also known
as Tarek Ahmed, has engaged in abusive registration of the domain name
"microsof.com" within the meaning of paragraph 4(a) of the Policy, the
Panel orders that the domain name "microsof.com" be transferred to the
Complainant, Microsoft Corporation.
Frederick M. Abbott
Sole Panelist
Dated: July 21, 2000
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No.
D2000-0044, decided March 16, 2000.
2. 15 USCS § 1057(b). See, e.g., Avery Dennison
v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
3. For purposes of deciding this proceeding, the Panel
need not further consider the legal significance of Complainants "Microsoft"-formative
marks.
4. See Sporty's Farm v. Sportsman's Market, 202 F.3d
489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast
Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision,
the Panel need not address whether ".com" may be capable of acquiring secondary
meaning in another context.
5. See Brookfield, id.,174 F.3d 1036, 1055 (9th Cir.
1999).
6. See Brookfield, id., 174 F.3d 1036, 1053-61 (9th Cir.
1999), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
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