WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. 3D Roulette

Case No. D2004-0232

 

1. The Parties

The Complainant is Microsoft Corporation, Redmond, Washington, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is 3D Roulette, Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <microsoft888.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2004. On March 25, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On March 25, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2004.

The Center appointed Peter G. Nitter as the sole panelist in this matter on April 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant manufactures, markets and sells computer software and related products and services, including products and services designed for use on the Internet, under its trademark MICROSOFT.

Complainant has registered the trademark MICROSOFT for a wide range of products and services throughout the world, including registrations in Taiwan.

In connection with the MICROSOFT mark, Complainant has established Internet websites located at domain names comprised of the MICROSOFT mark, including <microsoft.com> and <microsoft.net>.

Respondent has registered and used the disputed domain name, <microsoft888.com>.

5. Parties' Contentions

A. Complainant

The disputed domain name is confusingly similar to the MICROSOFT trademark.

A domain name is confusingly similar to a distinctive trademark when the domain name incorporates the trademark in its entirety. This is true even when letters or numbers are attached to the trademark for use as a domain name. Numerous courts and administrative panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company's name or mark. The disputed domain name consists solely of the MICROSOFT trademark and the number "888" added to the end of the trademark. The addition of the number "888" is a non-descriptive suffix that does not add anything to the MICROSOFT trademark. The domain name <microsoft888.com>, is therefore "prima facie identical or confusingly similar" to the MICROSOFT trademark and the domain names associated with the Microsoft websites. Confusion occurs whenever an Internet user seeking a Microsoft website finds instead the Microsoft888 website. This confusion is further enhanced by Respondent's provision of a link to an official Microsoft website in the stylized font associated with Complainant.

Respondent has no legitimate interest in the disputed domain name.

Section 4(c) of the Policy sets out a non-exhaustive list of three circumstances that may demonstrate a respondent's legitimate interest in a domain name. None of the circumstances listed in section 4(c) of the Policy apply in the present case.

Respondent has not used and is not using the disputed domain name "in connection with a bona fide offering of goods or services.", see the Policy section 4(c)(i). In general, use of a domain name that is confusingly similar to another's trademark in connection with goods or services unrelated to that mark does not constitute a "bona fide offering" where the registrant has no other legitimate right to use the mark. In specific, the use of another's mark in a domain name to divert Internet users attempting to reach the trademark owner's website to a commercial site promoting a casino gambling site is not a bona fide or legitimate use of the domain name.

Neither Respondent nor the services it offers has any connection or affiliation with Microsoft or the MICROSOFT trademark, and Respondent has received no license or consent, express or implied, to use the MICROSOFT trademark in a domain name or in any other manner. Moreover, the services offered by Respondent have no relationship to the MICROSOFT trademark. Respondent's registration and use of the disputed domain name appears to be for the sole purpose of attracting viewers to its casino website by using the world famous MICROSOFT trademark. Furthermore, it is highly unlikely that Respondent could be "commonly known" by the disputed domain name given its confusing similarity to the MICROSOFT trademark, the substantial goodwill established by the Complainant in the MICROSOFT trademark, and Complainant's rigorous policing of the MICROSOFT trademark.

Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent's website is apparently a commercial on-line gambling site or casino. Thus, Respondent's use of the disputed domain name does not qualify as a "legitimate non-commercial use" as defined by the Dispute Policy. To the contrary, Respondent's website is a commercial casino site that has no relationship to Microsoft and yet seeks to draw traffic to it, for financial gain, by incorporating Microsoft's world-famous mark within its domain name.

Respondent has registered and used the disputed domain name in bad faith.

Respondent is deemed to have knowledge of Microsoft's rights in the Microsoft trademark by virtue of Microsoft's federal trademark registrations for the MICROSOFT trademark. Thus, Respondent should be found to have registered the disputed domain name in bad faith because Respondent knew or should have known of the Microsoft Mark at the time he registered the confusingly similar disputed domain name. Moreover, the registration of a domain name incorporating a distinctive mark that has no generic meaning is highly suspicious, as it is improbable that the registrant would invent the name independently. "Microsoft" has no generic meaning but is a world famous mark that consumers associate with the goods and services of Complainant. Accordingly, it is highly unlikely that Respondent invented the <microsoft888.com> domain name independently, and he has thus registered the disputed domain name in bad faith.

The disputed domain name incorporates the world famous MICROSOFT mark, and neither Respondent nor the casino gaming services it offers have any relationship or affiliation with Microsoft. When a trademark is famous, "the very use of the mark in the form of a domain name by a third party suggests `bad faith." In fact, such "conduct alone creates a prima facie inference of bad faith." Complainant has made a reference to Microsoft Corp. v. Charlie Brown, WIPO Case No. D2001-0362. Respondent's use of the Infringing Domain Name to channel Internet traffic to a commercial gaming website thereby evidences its bad faith intent to use the MICROSOFT mark for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant's trade mark is not identical to the disputed domain name, and the question is therefore whether there is a confusing similarity between the two.

There can be no doubt that Complainant's trademark MICROSOFT is to be regarded famous, and that it has become distinctive. The Panel finds it evident that the trademark will be known to most users of the Internet worldwide.

The domain name at issue incorporates in its entirety Complainant's famous and distinctive trademark MICROSOFT. Complainant's trade mark is clearly the most distinctive part of the disputed domain name, and the addition of the numbers "888" is a non-descriptive suffix and does not add anything to the MICROSOFT trademark.

Previous Panel decisions under the UDRP have concluded that the generic top level domain denominator is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark.

The Panel finds it most likely that a majority of the users of Internet immediately will recognise the trade mark, and assume that the domain name is connected to an Internet web site owned, controlled or endorsed by Complainant. The risk of such confusion is also increased by Respondent's use of the MICROSOFT figurative mark on its web site. The Panel thus finds that the disputed domain name is confusingly similar to Complainant's trademark MICROSOFT.

B. Rights or Legitimate Interests

Complainant has informed that Respondent has no connection or affiliation with Complainant, and that he 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 has not provided any response, and none of Complainant's assertions have thus been contested by Respondent. In the event that any such connection, affiliation or consent existed, it would have been easy for Respondent to substantiate this.

In accordance with the above, there is no evidence allowing the Panel to conclude that any circumstances listed at paragraph 4(c) of the Policy apply to Respondent's situation, and Complainant has established prima facie that the Respondent has no rights or legitimate interests in the domain name.

Complainant has provided evidence that Respondent has directed the domain name at issue to an Internet web site offering casino gaming services. The Panel finds it unlikely that Respondent would have any rights or legitimate interests in the use of a domain name that is confusingly similar to such a famous trademark in connection to the offering of such services.

For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

As a result of the worldwide fame of Complainant's trade mark MICROSOFT, the distinctiveness of this trade mark, and Respondent's use of the MICROSOFT figurative trade mark with a link to Complainant's Internet web site, the Panel finds it evidenced that Respondent had knowledge of Complainant's rights in the MICROSOFT trade mark at the time of the registration of the disputed domain name, and that the domain name was registered in bad faith.

The Panel accepts the Complainant's assertion that the Respondent's registration of the domain name incorporating in its entirety the trade mark of the Complainant is an attempt to intentionally divert customers to its Internet web site for financial gain. The Panel thus finds that Respondent also is using the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <microsoft888.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Date: May 4, 2004