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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Registrate Co.

Case No. D2003-0156

 

1. The Parties

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

The Respondent is Registrate Co., of Republic of Korea.

 

2. The Domain Name and Registrar

The domain name at issue is <wwhotmail.com> (hereinafter referred to as the "Domain Name").

The Registrar for the Domain Name is Bulkregister.com (hereinafter referred to as the "Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (hereinafter referred to as the "Center") on February 27, 2003. On February 28, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On February 28, 2003, BulkRegister.com 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.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 8, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "ICANN Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "ICANN Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "WIPO Supplemental Rules").

In accordance with the ICANN Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2003. In accordance with the ICANN Rules, paragraph 5(a), the due date for Response was March 31, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2003.

The Center appointed Hugues G. Richard as the sole panelist in this matter on April 9, 2003. The Panel finds that it was constituted in compliance with the ICANN Rules and the WIPO Supplemental Rules. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the ICANN Rules, paragraph 7.

The Panel has received no further submissions from either party since its formation.

The Panel is obliged to issue a decision on or prior to April 23, 2003, in the English language.

 

4. Factual Background

The following uncontradicted and unchallenged facts appear from the Complaint and the documents submitted in support thereof:

The Complainant is a well-known, worldwide provider of computer software and related products and services, including products and services designed for use through the Internet. It also offers a number of online services for use by Internet users, including the free electronic mail services found at "www.hotmail.com" (Exhibit F) and identified by the U.S. registered HOTMAIL trademark (Serial Number 75272783) (Exhibit D).

Since 1997, users of the Complainant’s Hotmail services have increased tenfold. Hotmail has over 100 million users worldwide and the service is available in more than ten different languages. In fact, Hotmail has been described by the Guinness Book of World Records as the world’s largest free e-mail service (Exhibit E).

According to the Registrar’s WHOIS database, the Respondent registered the Domain Name on or about October 31, 2000 (Exhibit A).

The Respondent has been involved in number of proceedings brought pursuant to the ICANN Policy in which the owners of well-known trademarks successfully obtained transfer or cancellation of domain names registered and used in bad faith by the Respondent (see American Airlines, Inc. v. Registrate Co., NAF Case No. FA0203000105978 (May 10, 2002); Avon Products, Inc., v. Registrate Co., WIPO Case No. D2001-1415 (January 29, 2002); Continental Airlines, Inc. v. Registrate Co., NAF Case No. FA0106000097731 (July 27, 2001); Public Broadcasting Service v. Registrate Co., NAF Case No. FA0106000097738 (July 25, 2001)).

 

5. Parties’ Contentions

Over and above the uncontested and unchallenged factual background as noted above, which is hereby incorporated herein by reference, it has been contented by:

A. Complainant

The Complainant submits that the HOTMAIL trademark has become distinctive and well known, and that it has developed an enormous amount of goodwill in the mark.

The Complainant alleges that it first became aware of the Respondent’s Domain Name when its counsel received on January 19, 2003, an e-mail message from Mr. Damir Kruzicevic titled "wwhotmail.com for sale" which read: "$5000, Contact me if interested" (Exhibits K and L).

The Complainant contends that both the Respondent and Mr. Kruzicevic are "repeat cybersquatters who engage in a practice of registering domain names comprised of typographical errors of other companies’ well known trademarks". It also alleges that "Mr. Kruzicevic and the Respondent are financially affiliated and are engaging in a common scheme intended to capitalize on the goodwill associated with others’ trademarks for their own illegitimate purposes, namely to drive Internet traffic to pornographic and gambling websites owned by, or financially affiliated with, Respondent and Kruzicevic".

The Complainant contends that the Respondent is not actively using the Domain Name. Rather, the Domain Name registered by the Respondent is being redirected to "www.ownbox.com/treasure/search.html" in which is displayed a pop-up box that "encourages Internet users to enter an online casino gambling website" (Exhibit H). The pop up box reads "CONGRATULATIONS!!! YOU’VE WON VIRTUAL REALITY CASINO! CLICK ON OK and Get Up to +100$ FREE Bonus on your first deposit!". According to the Complainant, users who do not click on this pop up box are further redirected from "www.ownbox.com/treasure/search.html" to "www.gito.com" which appears to be a website where users may conduct web searches within certain categories, such as, without limitation, "sex, free credit reports, free casino games, and cellular phones" (Exhibits H and I).

The Complainant submits that the Domain Name is almost identical, and therefore confusingly similar, to its HOTMAIL mark and official Hotmail website located at "www.hotmail.com". According to the Complainant, the two domain names are largely indistinguishable, both phonetically and visually.

The Complainant is of the view that the Respondent has attempted to take advantage of Internet users expecting to find at the Domain Name address the Hotmail website. While some Internet users will correctly locate the official Hotmail website at "www.hotmail.com", others, according to the Complainant, will mistakenly type "www.wwhotmail.com" in their browsers and actually be confused as to the connection between the Respondent’s website and services and the Complainant. At the very least, contends the Complainant, users arriving at the Respondent’s website will be "initially confused" regarding the Complainant’s association with the Respondent.

The Complainant further contends that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the HOTMAIL mark in a domain name or in any other manner.

The Complainant submits that the Respondent’s misuse of the HOTMAIL mark to expose Internet users attempting to reach the official Hotmail website to commercial websites promoting gambling and pornographic content (as described above) is not a bona fide use.

The Complainant additionally submits that the Respondent has registered the Domain Name in bad faith based on, inter alia, (i) the Respondent’s knowledge of, and intent to capitalize on, the goodwill associated with the HOTMAIL mark at the time it registered the Domain Name, (ii) the Respondent’s previous opportunistic cybersquatting behavior, and (iii) the Respondent deemed constructive notice of the Complainant’s trademark rights in the HOTMAIL U.S. registered trademark.

The Complainant also contends that the Respondent has used the Domain Name in bad faith based on, inter alia, (i) the Respondent’s use of the confusingly similar Domain Name to divert Internet traffic away from the official "www.hotmail.com" website, (ii) the four previous findings of bad faith registration and use against the Respondent pursuant to the ICANN Policy, and (iii) the financial affiliation of the Respondent and Mr. Kruzicevic and the latter’s illegitimate conduct in offering to sell the Complainant’s counsel the Domain Name for $5000.

B. Respondent

The Respondent has failed to file a timely Response with the Center. No reasons were given to explain why no response was provided within the stated period.

 

6. Discussion and Findings

Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to cumulatively show:

(i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;

(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) that the Domain Name is registered and used in bad faith.

These three elements are considered below:

(i) Whether the Domain Name Is Identical or Confusingly Similar to a Trademark in which Complainant has Rights

The Complainant has established rights in the HOTMAIL trademark based on its registration with the U.S. Patent and Trademark Office. It is not necessary that Complainant establish rights in its mark in a jurisdiction where the Respondent resides (see Koninklijke KPN N.V. v. Telepathy Inc., WIPO Case No. D2001-0217 (May 18, 2001); Public Broadcasting Service v. Registrate Co., NAF Case No. FA0106000097738 (July 25, 2001)).

The <wwhotmail.com> domain name is confusingly similar to the Complainant’s HOTMAIL mark as the two are almost identical. In fact, the Respondent’s Domain Name incorporates the HOTMAIL mark in its entirety combined with the letters "ww". It is well established that the mere addition of letters or misspelling to a famous trademark results in a domain name that is confusingly similar to the Complainant’s mark (Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (August 16, 2001), quoting America Online Inc. v. John Zuccarini, WIPO Case No. D2000-1495 (February 5, 2001)). Pursuant to the above mentioned reasons, the Panel is, therefore, of the opinion that the Complainant has satisfactorily met its burden of proof as required by paragraph 4(a)(i) of the ICANN Policy.

(ii) Whether the Respondent Has Rights or Legitimate Interests in the Domain Name

By demonstrating that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the HOTMAIL mark in a domain name or in any other manner, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Domain Name.

Additionally, the fact that the Respondent is not actively using the Domain Name but is redirecting Internet users to commercial websites promoting gambling and pornographic content supports the finding of absence of legitimate interests in the Domain Name (see MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205(May 11, 2000)).

For these reasons, the Panel concludes that, on a balance of probabilities, the Complainant has discharged its burden of showing that the Respondent has no rights or legitimate interests in the Domain Name especially since there has been no explanation or evidence offered by the Respondent to establish the contrary.

(iii) Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith by the Respondent

The Panel finds that the Respondent has acted in bad faith in both the registration and use of the Domain Name. The fact that the Respondent chose an apparent misspelling of the Complainant’s mark and domain name "www.hotmail.com" is enough to conclude that the Respondent has been registered and used in bad faith. It cannot be reasonably be imagined that the Respondent chose for its Domain Name a misspelling of Complainant’s domain name without knowing the Complainant’s mark and domain name. Given the distinctiveness and reputation of the Complainant’s trademark and the improbability of the Respondent coming up with the name independently, the registration was undoubtedly made in bad faith with the intent to attract business to its site (Telstra Corp. Ltd. v. Norman Fry, WIPO Case No. D2001-0757 (August 13, 2001)).

Additionally, the Respondent’s previous opportunistic cybersquatting behavior supports the conclusion that the Domain Name was registered and used in bad faith. Given the Respondent’s prior bad faith conduct, it is highly unlikely that the Respondent did not know of the Complainant’s rights in the HOTMAIL mark at the time the Domain Name was registered.

Finally, the Respondents passive holding of the Domain Name in combination with having no legitimate rights or interest in the Domain Name and the strong likelihood of being aware of the Complainant’s reputation, can be interpreted as bad faith use for the purposes of paragraph 4(a)(iii) of the ICANN Policy (Telstra Corporation Limited v. Norman Fry, WIPO Case No. D2001-0757(August 13, 2001)).

 

7. Decision

For the foregoing reasons, the Panel finds that:

- The Domain Name registered by the Respondent is confusingly similar to the trademark in which the Complainant holds rights;

- The Respondent has no rights or legitimate interests in respect of the Domain Name; and

- The Domain Name has been registered and is being used by the Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the ICANN Policy and 15 of the ICANN Rules, the Panel orders that the registration of the Domain Name <wwhotmail.com> be transferred to the Complainant and directs the Registrar to so forthwith.

 

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Hugues G. Richard
Sole Panelist

Dated: April 17, 2003