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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Mr. Shravan Debbad
Case No. D2000-1161
1. The Parties
1.1 The Complainant is Microsoft Corporation having a business address of One Microsoft Way, Redmond, Washington 98052, United States of America.
1.2 The Respondent is Shravan Debbad who has an address of 4201 Glenhaven Drive, Tracy, California 95376, United States of America.
2. The Domain Names and Registrars
2.1 The disputed domain names are <123hotmail.com> and <hot6mail.com>.
2.2 The Registrar of the disputed <123hotmail.com> domain name is Registrars.com with a business address in San Francisco, California, USA.
2.3 The Registrar of the disputed <hot6mail.com> domain name is Network Solutions, Inc. with a business address in Herndon, Virginia, USA.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("the Center") on August 31, 2000.
3.2 On October 26, 2000, all formal requirements for the establishment of the complaint were checked by the Center and found to be in compliance with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the Center’s checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.3 On October 26, 2000, the Center transmitted notification of the complaint and commencement of the proceedings to Respondent via e-mail, facsimile, and courier mail.
3.4 On November 16, 2000, the Center transmitted a notification of default by the Respondent to the parties.
3.5 On November 17, 2000, the Center received several e-mails from the Respondent requesting that all documents forwarded by the Center be resent to email@example.com, that Respondent had not received previous email messages and that his physical address changed two months earlier to 4201 Glenhaven Drive, Tracy, California 95376, United States of America.
3.6 On November 20, 2000, the Center retransmitted notification of the complaint and commencement of the proceedings to Respondent via e-mail and courier to the email and physical addresses provided by Respondent. The Center also indicated to the Respondent that it would be up to the Administrative Panel (the "Panel") to decide in its sole discretion whether to accept any late filed response.
3.7 On November 28, 2000, the Center 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 November 28, 2000, the undersigned transmitted by facsimile the executed Statement and Declaration to the Center.
3.8 On December 4, 2000, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole panelist as the Panel in this matter. The Center notified the Panel that, absent exceptional circumstances it would be required to forward its decision to the Center by December 17, 2000.
3.9 On December 5, 2000, the Center sent Respondent several email messages answering questions asked by Respondent. Later that same day the Respondent replied to the emails from the Center but did not provide a response to the complaint.
3.10 On December 15, 2000, the Panel requested an extension of time to forward its decision, which the Center granted extending the period up to and including January 4, 2001.
3.11 The Panel has not received any further 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. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainant is a well-known, worldwide provider of computer software and related products and services.
4.2 Complainant also operates an email service through the URL www.hotmail.com.
4.3 Complainant owns U.S. Trademark Registration No. 2,165,601 for the mark HOTMAIL in international classes 35 and 38. The mark was registered on June 16, 1998 having a date of first use in commerce of July 4, 1996.
4.4 Complainant also owns numerous trademark registrations to the mark HOTMAIL in other countries.
4.5 Complainant states that Respondent is not a licensee of Complainant nor is it authorized to use Complainant’s HOTMAIL mark.
4.6 The Registers.com WHOIS database indicates that Respondent registered the domain name <123hotmail.com> on January 11, 2000.
4.7 The Network Solutions WHOIS database indicates that Respondent registered the domain name "hot6mail.com" on August 21, 1999.
5. Parties’ Contentions
"Microsoft’s HOTMAIL e-mail service is a free, web-based service that allows users who are online to access e-mail accounts wherever they can find an internet connection, instead of only from a single computer. This service has proven a very popular offering among consumers. In fact, Microsoft’s HOTMAIL email service is the #1 ranked site worldwide among all email services. This service is offered in seven different languages worldwide and is used by over 73 million people in 240 countries, territories and protectorates."
"In the United States, Microsoft owns a federal trademark registration, Reg. No. 2,165,601, for the HOTMAIL mark in classes 35 and 38 for: (1) advertising and marketing services, namely, promoting the goods and services of others by placing advertisements and promotional displays in an electronic site accessed through computer networks and by delivering advertisements and promotional materials to others via electronic mail; and (2) electronic mail services. A certified copy of the Certificate of Registration is attached as Exhibit C. Microsoft acquired this registration from the Hotmail Corporation as a result of a 1998 merger. A copy of the Certificate of Merger as well as a copy of the recordation of the assignment of the federal trademark registration is attached as Exhibit D."
"Microsoft’s trademark registration serves as prima facie evidence of its ownership of the HOTMAIL mark and of the validity of the HOTMAIL mark. 15 U.S.C. § 1115. The registration also provides constructive notice of Microsoft’s rights in the HOTMAIL mark. 15 U.S.C. § 1072."
"Microsoft and its predecessor in interest have spent substantial time, effort, and money advertising and promoting the HOTMAIL mark throughout the United States and the world."
"As a result of Microsoft’s use and registration of HOTMAIL, the HOTMAIL mark has become world famous, and Microsoft has developed an enormous amount of goodwill in the mark making it an extremely valuable corporate asset. See Hotmail Corp. v. Van$ Money Pie Inc., 47 USPQ2d 1020, 1024 (N.D. Cal. 1998) ("there is sufficient evidence to lead to a finding that plaintiff’s trademark [HOTMAIL] is ‘famous’ within the meaning of 15 U.S.C. § 1125(c)(1)")"
"The domain names at issue, www.123hotmail.com and www.hot6mail.com, consist of the HOTMAIL mark in combination with arbitrary numbers. Entry of the domain names pulls up websites containing elements, such as title bars and login areas, which are similar to certain elements on Microsoft’s Hotmail login page. These websites offer free e-mail services in direct competition with Microsoft’s Hotmail service."
"The sites at www.123hotmail.com and at www.hot6mail.com are nearly identical to each other in layout and content with only minor differences. Both websites make prominent use of Microsoft’s HOTMAIL trademark. For example, on the 123hotmal site, the 123hotmail banner on the top of the page displays the HOTMAIL mark in a different color than the "123." Additionally, the website at www.hot6mail.com claims "It’s Sexier than plain old hotmail!" in large, prominent lettering on the page."
"[Respondent's] use of domain names that incorporate Microsoft’s famous HOTMAIL mark for directly competitive services is likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of [Respondent's] services in that consumers and others are likely to believe Microsoft authorizes or controls [Respondent's] websites or that [Respondent] is associated with or related to Microsoft."
"[Respondent] has no connection or affiliation with Microsoft, and has not received any express or implied license or authorization to use the HOTMAIL mark in a domain name or in any other manner."
"On information and belief, [Respondent] has not used the HOTMAIL name in connection with the offering of goods and services prior to Microsoft’s first use of its HOTMAIL mark on July 4, 1996. [Respondent's] launch of the www.123hotmail.com and www.hot6mail.com websites was subsequent to Microsoft’s first use of its HOTMAIL mark on July 4, 1996. Further, [Respondent] is not making non-commercial or fair use of the names."
"On information and belief, [Respondent] has not applied for or obtained any state or federal trademark or service mark registrations for 123hotmail or hot6mail."
"On information and belief, [Respondent] registered names comprised of the famous HOTMAIL trademark mixed with numbers in order to misdirect users who were attempting to locate the official web site associated with the HOTMAIL mark to his own e-mail provider sites."
"[Respondent's] use of HOTMAIL-formative domain names to offer services that are directly competitive with Microsoft’s HOTMAIL services constitutes evidence of bad faith."
"On May 23, 2000, Microsoft sent [Respondent] a letter via e-mail and certified mail, in which it informed him that it considered his registration of the domain names to infringe upon and dilute the HOTMAIL mark."
"There is little doubt that [Respondent] must have had actual knowledge of Microsoft’s famous HOTMAIL mark and he intended to attract users to his websites by creating a likelihood of confusion with Microsoft’s mark. Microsoft’s HOTMAIL service is widely known and used by 73 million people worldwide. [Respondent] is offering the same kind of services as Microsoft, and he even makes a reference to Microsoft’s service by using the phrase "It’s Sexier than plain old hotmail" to entice customers to sign up for his service."
Respondent did not file a response to the complaint.
6. Discussion and Findings
6.1 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. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 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., paragraph 2(a) of the Rules).
6.3 Based upon the numerous email messages between the Center and the Respondent, and air courier receipts and confirmations of e-mails sent to the Respondent, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Respondent was clearly aware of the proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
6.4 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) Respondent’s 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) Respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.5 Complainant asserts that the domain names <123hotmail.com> and <hot6mail.com> are confusingly similar to Complainant's trademark "HOTMAIL."
6.6 Complainant also asserts that it obtained the U.S. registration to the HOTMAIL mark from the Hotmail Corporation as a result of a 1998 merger.
6.7 As the Respondent has failed to submit a response to the complaint, the Panel accepts as true all of the allegations of the complaint. See Talk City, Inc. v. Michael Robertson, D2000-0009, February 29, 2000.
6.8 Although the <123hotmail.com> and <hot6mail.com> domain names are not identical to the "HOTMAIL" mark, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark. See Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO D2000-0150, May 2, 2000 (WAL-MART and walmartcanada.com are confusingly similar); CSA International v. John O’Shannon and Care Tech Industries, Inc., WIPO D2000-0071, March 24, 2000 (csa-canada.com is substantially identical to and confusingly similar to CSA trademark).
6.9 The Panel finds the <123hotmail.com> and <hot6mail.com> domain names are identical or confusingly similar to the trademark "HOTMAIL" and that the Complainant has established it has rights in the trademark "HOTMAIL," pursuant to paragraph 4(a)(i) of the Policy.
6.10 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain names "123hotmail.com" or "hot6mail.com." Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. See N.C.P. Marketing Group, Inc. v. Entredomains, D2000-0387, July 5, 2000.
6.11 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names <123hotmail.com> or <hot6mail.com>, pursuant to paragraph 4(a)(ii) of the Policy.
6.12 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) states:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
6.13 Use by the Respondent of the confusingly similar domain names <123hotmail.com> and <hot6mail.com> for its own free web-based e-mail fall squarely within paragraph 4(b)(iv) of the Policy.
6.14 The Respondent clearly had knowledge of Complainant's rights in the "HOTMAIL" mark as evidenced from the fine print on its 123hotmail web page. In small print at the bottom of the web page the Respondent states "Disclaimer: This site not to be confused with 123.com or hot.com or www.com or the world's most notorious monopoly Microsoft's Hotmail.com."
6.15 This disclaimer does not excuse or mitigate Respondent's unauthorized use of the "HOTMAIL" mark. The unchallenged averment that Respondent registered the domain names to intentionally attract Internet users to his web sites by creating a likelihood of confusion with Complainant's "HOTMAIL" mark falls squarely within the ambit of paragraph 4(b)(iv) of the Policy. (See Milwaukee Radio Alliance, L.L.C. v. WLZR-FM LAZER 103, WIPO Case No. D2000-0209, June 5, 2000.)
6.16 The Panel finds that the Complainant has established that the Respondent registered and used the domain names <123hotmail.com> and <hot6mail.com> in bad faith.
As the Complainant, Microsoft Corporation, has established that the Respondent, Shravan Debbad, has engaged in abusive registration of the domain names <123hotmail.com> and <hot6mail.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names <123hotmail.com> and <hot6mail.com> be transferred to the Complainant.
R. Eric Gaum
Dated: December 27, 2000