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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Mr. Leonardo Sciascia

Case No. D2008-1081

 

1. The Parties

The Complainant is Microsoft Corporation, Washington, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.

The Respondent is Mr. Leonardo Sciascia, Firenze, Italy.

 

2. The Domain Name and Registrar

The disputed domain name <microsoftbet.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2008. On July 17, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 18, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).

On July 22, 2008, 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 July 22, 2008 and that in accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2008.

The Respondent did not submit any Response by the due date, but on August 12, 2008, the Respondent sent a document described as a “Counterclaim” setting out his position and arguments. As neither the Complainant nor the administrative proceeding was prejudiced by the delay, the Panel has admitted and considered this document as the Response.

The Center appointed James Bridgeman as the sole panelist in this matter on August 21, 2008. 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

The Complainant is the owner of numerous registrations of trademark and service mark MICROSOFT in the United States of America (“United States”) in connection with its business including the following:

Mark	Jurisdiction	Date Issued	Registration No.
MICROSOFT	United States	08/10/04	2,872,708
MICROSOFT	United States	05/18/04	2,843,964
MICROSOFT	United States	10/15/02	2,637,360
MICROSOFT	United States	10/20/98	2,198,156
MICROSOFT	United States	10/20/98	2,198,155
MICROSOFT	United States	10/20/98	2,198,154
MICROSOFT	United States	10/20/98	2,198,153
MICROSOFT	United States	06/09/98	2,163,597
MICROSOFT	United States	06/08/98	2,250,973
MICROSOFT	United States	04/04/00	2,337,072
MICROSOFT	United States	10/12/99	2,285,870
MICROSOFT	United States	04/09/96	1,966,382
MICROSOFT	United States	04/21/92	1,684,033
MICROSOFT	United States	05/26/92	1,689,468
MICROSOFT	United States	04/21/92	1,683,585
MICROSOFT	United States	05/05/92	1,685,083
MICROSOFT	United States	11/10/92	1,731,160
MICROSOFT	United States	04/07/92	1,682,075
MICROSOFT	United States	05/05/92	1,685,234
MICROSOFT	United States	04/14/92	1,683,069
MICROSOFT	United States	09/15/92	1,715,749
MICROSOFT	United States	01/28/92	1,673,353
MICROSOFT	United States	09/15/92	1,715,596
MICROSOFT	United States	09/15/92	1,715,836
MICROSOFT	United States	11/01/83	1,256,083
MICROSOFT	United States	07/06/82	1,200,236

The Complainant submits that each of the above-referenced trademark and service mark registrations is valid and subsisting and the Complainant has furnished copies of pages from the U.S. Patent and Trademark Office’s website evidencing the above-referenced U.S. trademark and service mark registrations as an annex to the Complaint.

In addition to its above United States registrations for its MICROSOFT marks, the Complainant has also obtained trademark registrations for its MICROSOFT marks in over fifty countries throughout the world, including the following registrations in Italy where the Respondent resides:

Mark	Jurisdiction	Date Issued	Registration No.
MICROSOFT	Italy	03/03/08	1097841
MICROSOFT PUNTO DI CONTATTO	Italy	02/13/06	992568
MICROSOFT	Italy	12/13/05	986567
MICROSOFT	Italy	11/11/05	983267
MICROSOFT DOVE VUOI ANDARE OGGI	Italy	06/17/02	869731

Each of the above-referenced trademark registrations is valid and subsisting. Copies of pages from an international trademark search report evidencing the above-referenced Italian trademark registrations are attached as an annex to the Complaint.

The Complainant has established a significant online presence for its products and services through the registration of a variety of domain names incorporating its MICROSOFT trademark, including, among others, the domain name <microsoft.com>. The Complainant has submitted a copy of an Internet printout reflecting the Complainant’s registration of the domain name <microsoft.com> as an annex to the Complaint.

The Respondent registered the domain name in dispute on October 12, 2007.

 

5. Parties’ Contentions

A. Complainant

The Complainant requests this Panel to issue a decision that the domain name <microsoftbet.com> be transferred to the Complainant.

The Complainant submits that since its inception in 1975, the Complainant has created computer software and Internet services for use in the workplace, home, and educational settings. The Complainant is a well-known, worldwide provider of computer software and related products and services, including, but not limited to, computer operating systems, client-server applications, computer and video games, 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.

The Complainant offers these goods and services to the consuming public essentially under the MICROSOFT trademark which is registered in virtually every country in the world. The Complainant has used its MICROSOFT name for such goods and services continually since its adoption in 1975, expanding over time to include numerous additional related products and services.

The Complainant refers to and relies upon its rights in the above referenced registrations of the MICROSOFT trademark and service mark and submits that as a result of the Complainant’s long and extensive use and promotion of the MICROSOFT mark worldwide, the MICROSOFT mark has acquired distinctiveness and secondary meaning signifying the Complainant. The Complainant has built up and owns valuable goodwill which is symbolized by the MICROSOFT mark. By virtue of the Complainant’s extensive use and advertising of the MICROSOFT mark, including its use of such mark on Internet websites located at domain names incorporating the MICROSOFT mark, the MICROSOFT mark has become famous as associated with the Complainant.

The Complainant submits that a number of UDRP panels have recognized that the MICROSOFT mark is famous. Citing Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039 (noting that the MICROSOFT Mark is internationally famous); Microsoft Corporation v. Webbangladesh.com, WIPO Case No. D2002-0769 (stating that MICROSOFT “is a world-famous mark. It is perhaps one of the most recognized international trademarks in existence.”); Microsoft Corporation v. Paul Horner, WIPO Case No. D2002-0029 (stating that the MICROSOFT Mark is “well known in the United States and other countries.”).

The Complainant submits that the domain name <microsoftbet.com> is confusingly similar to the trademark and service mark MICROSOFT in which the Complainant has rights. The Complainant further submits that the domain name in dispute is confusingly similar to the Complainant’s domain name <microsoft.com>.

The Complainant refers to the fact that the domain name incorporates the Complainant’s MICROSOFT mark in its entirety and submits that a long line of cases under the Policy holds that when a domain name consists of the addition of a word or phrase to a complainant’s trademark, where the trademark is the dominant feature of a domain name, the additional word or phrase does not obviate similarity or confusion. See, e.g., Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082 (citing Adobe Systems Incorporated v. Jeff Bluff Online RX Sales LLC, WIPO Case No. D2006-1475); Microsoft Corporation v. Cedric Thompson., WIPO Case No. D2004-1097 (reasoning that the addition of the word “cares” to the MICROSOFT mark still renders the domain name <microsoftcares.com> confusingly similar to Complainant’s mark); E! Entertainment Television v. Xinyu Liu, WIPO Case No. DTV2007-0005.

Further, it has been held that the top-level domain name, in this case “.com,” does not influence the consideration of identity or confusing similarity. See Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071(finding the domain name <microsoftuiail.com> to be confusingly similar to Microsoft’s MICROSOFT mark.

As such, the disputed domain name is confusingly similar to the Complainant’s MICROSOFT mark.

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name or the MICROSOFT mark.

The Respondent has not made demonstrable preparations to use the <microsofbet.com> domain name in connection with any bona fide offering of goods or services. Instead, the Respondent has merely used the <microsoftbet.com> domain name in a deliberate attempt to intercept and siphon off Internet traffic intended for the Complainant’s products and/or services and to misdirect such traffic to its website. Indeed, the Respondent has not made any active use of the <microsoftbet.com> domain name or corresponding website, other than to advertise a website that is “coming soon” to purportedly offer online betting and/or gambling services (initially presenting this information in connection with an “adult” image), and then to ultimately offer the domain name for sale to Microsoft. As the MICROSOFT mark is not only fanciful and arbitrary, but also famous, it is deserving of the most heightened protection.

The Respondent has no agreements, legal or otherwise, with the Complainant authorizing him to use the MICROSOFT mark. The Respondent has not been personally identified, or commonly known, by names comprised, in whole or in part, of the term “microsoft”. To the best of the Complainant’s knowledge, the Respondent owns no trademark registrations for any mark comprised, in whole or in part, of the term MICROSOFT, nor has the Respondent applied for any such trademark registrations. Any use by the Respondent of the term MICROSOFT in connection with the offering of goods and services constitutes infringement of the Complainant’s valid trademark rights.

The Complainant submits that the domain name was registered and is being used in bad faith. The Respondent has commenced use of the Complainant’s MICROSOFT trademark years after the Complainant’s adoption and first use of the MICROSOFT mark and the acquisition of distinctiveness and secondary meaning therein. Specifically, the Complainant recently discovered that the Respondent registered the <microsoftbet.com> domain name, which incorporates in its entirety the Complainant’s MICROSOFT mark.

The Complainant submits that the Respondent was not in the past, and is not currently, making any legitimate use of the domain name. Indeed, prior to the Complainant contacting the Respondent regarding its concerns, the <microsoftbet.com> domain name was being used in connection with a website that was self-described a “coming soon” to purportedly provide online betting and/or gambling services, and that featured an “adult” image. A copy of a printout of the “Home” page from the website previously located at ”www.microsoftbet.com” has been furnished as an annex to the Complaint.

Soon after the Complainant contacted the Respondent, the content of the “www.microsoftbet.com” website was temporarily removed, and currently, the <microsoftbet.com> domain name is being used in connection with a website that was self-described on “Sat, 19 July 2008” as “coming soon” to provide the “[n]ext generation of [N]etting.” A copy of a printout of the “Home” page from the website located at “www.microsoftbet.com” on that date is also annexed to the Complaint.

On June 5, 2008, the Complainant’s outside counsel sent a cease and desist letter to the Respondent through its listed registrant contact, Domains by Proxy, Inc., requesting that the Respondent immediately take down the “www.microsoftbet.com” website and either agree to cancel or transfer the registration for the <microsoftbet.com> domain name to the Complainant. Copies of the Complainant’s cease and desist letter were sent to the Respondent through its registrant contact by both e-mail and Federal Express delivery at the e-mail address and mailing address provided by Respondent to the registry with which the domain name is registered. A copy of the Complainant’s letter is annexed to the Complaint.

On June 17, 2008, the Respondent replied and indicated that he had temporarily taken down the website located at the “ www.microsoftbet.com ” address and, stated that he would be “willing to assess a fair proposal that can satisfy both sides.” The Complainant submits that this statement can be presumed to be a request for a monetary offer in exchange for the transfer of the <microsoftbet.com> domain name to the Complainant.

The Respondent offered no reason for his registration of the domain name incorporating the Complainant’s famous MICROSOFT mark.

On June 18, 2008, legal counsel for the Complainant responded to Respondent’s June 17, 2008 e-mail, requesting confirmation that that the Respondent would transfer the <microsoftbet.com> domain name to Microsoft immediately.

The Respondent replied by e-mail on June 18, 2008, and reiterated his demand that Microsoft make him a “fair offer.”

On June 24, 2008, the Respondent again contacted Microsoft’s legal counsel, stating that if the Respondent did not receive a reply within two days, the Respondent would launch its promotional campaign and begin to negotiate with other companies.

On June 26, 2008, legal counsel for Microsoft responded to this e-mail, offering reimbursement of the reasonable cost of registering the <microsoftbet.com> domain name, in an amount not to exceed USD 100.00.

On June 28, 2008, the Respondent replied to this letter, rejecting Microsoft’s offer as “offensive” and refusing to transfer or cancel the <microsoftbet.com> domain name.

Copies of this exchange of correspondence have been annexed to the Complaint.

The Complainant states that this proceeding was instituted as a result of Respondent’s refusal to comply with the Complainant’s demands, and the Complainant’s obligation to protect its intellectual property from unauthorized use by others.

The Respondent registered the <microsofbet.com> domain name in bad faith with full knowledge of the MICROSOFT mark. By virtue of the Complainant’s United States and Italian trademark and service mark registrations, the Respondent was put on constructive notice of the Complainant’s rights in the MICROSOFT mark prior to acquiring the infringing domain name. In addition, the Respondent has been placed on actual notice of such rights by the Complainant prior to the Complainant instituting this administrative proceeding by virtue of the correspondence sent by the Complainant’s attorney to the Respondent.

The Complainant submits that it is simply not possible to conceive of any plausible circumstance where the Respondent could have coincidentally registered the domain name without first knowing of, and intentionally infringing upon, the MICROSOFT mark. See Microsoft Corporation v. Cedric Thompson, WIPO Case No. D2004-1097 (explaining that the MICROSOFT mark is “internationally famous” and finding bad faith because “when the Complainant’s trademark is sufficiently famous, its inclusion in the disputed domain name cannot be considered coincidental . . .”); Microsoft Corporation v. Luong Xuan Vinh, WIPO Case No. D2007-0580 (“Respondent’s bad faith may also be inferred from the fact that he registered the Disputed Domain Name [microsoftvietnam.net] incorporating the Complainant’s famous [MICROSOFT] trademark, despite having no connection with the Complainant”).

The Respondent has also used the <microsoftbet.com> domain name in bad faith. As evidenced by the content of the Respondent’s website prior to, and after, the Respondent’s notification of the Complainant’s objections, the Respondent is using the MICROSOFT mark to misdirect customers to its website by creating a likelihood of confusion with the MICROSOFT mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

In addition, Respondent utilized an “adult” image on the website that served to tarnish Complainant’s famous MICROSOFT mark.

As such, Respondent has violated paragraph 4(b)(iii) of the Policy by preventing customers who are looking for the Complainant from finding the Complainant, and also by tarnishing the Complainant’s famous MICROSOFT mark, thereby disrupting the Complainant’s business.

Further evidence that the Respondent has used the <microsoftbetcom> domain name in bad faith can be gleaned from the Respondent’s attempts to sell the domain name. Certain circumstances set out in paragraph 4(b) of the Policy may “in particular but without limitation” be evidence of bad faith. Among these are circumstances indicating that the domain name has been registered or acquired by a respondent “primarily for purposes of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name.” Id. at 4(b)(i). As evidenced by the Respondent’s demands for remuneration and subsequent rejection of Complainant’s proposal to reimburse Respondent for the costs associated with transferring the <microsoftbet.com> domain name to Complainant, it can be presumed that Respondent is using the <microsoftbet.com> website for purposes of resale. As such, Respondent has violated paragraph 4(b)(i) of the Policy by seeking a substantial sum of money for a domain name that is identical to a trademark in which the Complainant has demonstrated rights.

B. Respondent

The Respondent submits that the domain <microsoftbet.com> was free at the time of registration. The Respondent sent a request through the registrar GoDaddy.com, Inc. and his application was accepted. The Respondent submits that this shows that this claim was examined by the competent authorities, and the registration was accepted. He submits that he is therefore the legitimate holder of the domain name <microsoftbet.com> and it is his exclusive private property.

The Respondent denies that his ownership and use of the domain name violates any trademark, let alone that of the Complainant.

He submits that the domain name consists of three words that are in common use viz. micro, soft and bet. The union of these three words generates the domain name that corresponds to <microsoftbet.com>.

The Complainant submits that if the Complainant has concerns about violations of its mark, it should register all similar domain names such as <microsoftbet.com> but he notes that the domain names <microsoftbet.net> and <microsoftbet.org> remain free and available.

The Respondent denies that he ever tried to obtain money in bad faith. He argues that the Complainant offered “the miserable sum of 100 U.S. dollars” and when this offer was refused the Respondent was dragged in to this proceeding.

The Respondent remains happy to sell the domain name <microsoftbet.com> to the Complainant but since it is a privately owned exclusive property, he believes that the value of the domain name should be established between the two Parties and not by the Complainant only.

The Respondent alleges that the Complainant is disrespectful of others intellectual property and is non compliant with European Union anti-trust laws.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to 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; and

(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.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of rights in the MICROSOFT trademark and service mark by registration and at common law through its above-referenced registrations and its substantial use of the mark in business.

The Panel is satisfied that the domain name <microsoftbet.com> is confusingly similar to the Complainant’s MICROSOFT trademark and service mark.

The Panel has considered but rejected the Respondent’s argument that there is no likelihood of confusion because the domain name consists of three words in common usage viz. “micro”, “soft” and “bet”.

The dominant element of the domain name is the Complainant’s MICROSOFT mark. While that mark consists of two commonplace word elements “micro” and “soft”, the combination is distinctive of the Complainant’s business. Furthermore the wide reputation of the Complainant makes the combination all the more recognizable as a single coined word being the Complainant’s name.

The addition of the descriptive term “bet” in the context of an Internet domain name does not serve to distinguish the domain name from the mark.

B. Rights or Legitimate Interests

The Respondent has argued that he has rights and legitimate interest in the domain name because it was available when he registered it. He further submits that his application to register the domain name was examined by the Registrar as a “competent authority” and as such he acquired rights in the domain name.

The Respondent is incorrect in each of these submissions.

The mere registration of a domain name does not afford any rights or legitimate interest in the domain name for the purposes of paragraph 4(a) of the Policy. If such were the case, the second element of the test would be moot as the respondent is always by definition the registrant.

Furthermore the Panel is not aware of any restriction e.g., that there is any registration or examination of an applicant’s rights by a registrar in the “.com” tlD.

It is generally accepted that the burden of proof in the second element of the test in paragraph 4(a) of the Policy shifts to the Respondent once the Complainant makes out a prima facie case that the Respondent has no rights or legitimate interests in the domain name; see Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455.

In the present case, based on the Complainant’s contention above which have not been rebutted by the Respondent, not only the Complainant has made out a prima facie case not only that it is the owner of substantial and strong trademark rights in the MICROSOFT mark in both the United States and Italy but that it is unlikely that that the Respondent could achieve any rights or legitimate interests in the domain name that it so similar to the Complainant’s mark.

Furthermore the Complainant’s rights go back to the year 1975 with trademark registrations going back to 1982, whereas the domain name at issue was not registered until October 12, 2007.

The Complainant has therefore succeeded the second element of the test in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The domain name was registered by the Respondent on October 12, 2007 in the knowledge and apparent disregard of the Complainant’s rights in the trademark MICROSOFT.

It is obvious to the Panel that the domain name was chosen because of its similarity with the Complainant’s trademark, to take advantage of the Complainant’s reputation and goodwill in the mark. It is also obvious that the choice of the additional element “bet” was intended to associate the Complainant’s mark MICROSOFT with gambling.

It is not clear whether the Respondent registered the domain name to use it himself to attract Internet users to a gaming site. In either event the Panel finds that the registration was in bad faith. It is not clear from the print-out of the Respondent’s site provided by the Complainant as to whether the site had active links to gambling sites at any stage. As the Complainant would presumably have referred to any such links if they had been on the site, the Panel assumes that the Respondent has not actively used the domain name for gambling or click-through revenue and that he registered the domain name for resale. It would appear that the Respondent’s website was a merely a sham established to promote and facilitate the sale of the domain name.

The Respondent’s rejection of the Complainant’s offer to purchase the domain name for a sum that would cover his out-of-pocket expenses associated with the registration of the domain name and his subsequent statement that he remains willing to sell the domain name to the Complainant for a negotiated price, are further indications that he registered the domain name for resale either to the Complainant or alternatively to another purchaser intending to associate the domain name, and consequently the Complainant’s reputation and goodwill in the MICROSOFT mark, with a gambling site.

The Respondent was clearly at all times aware that his opportunistic registration and use of the domain name was likely to divert Internet users intending to make contact with the Complainant, away from the Complainant’s websites.

Furthermore, the Respondent incorporated an “adult” image in the graphics posted on the website established at the <microsoftbet.com> address in disregard of the Complainant..

In the circumstances this Panel is satisfied that this is a clear example of “cybersquatting” by the Respondent and the domain name was registered and is being used in bad faith. The Complainant is entitled to succeed in the Complaint.

 

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 <microsoftbet.com> be transferred to the Complainant.

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James Bridgeman
Sole Panelist

Date: September 4, 2008