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WIPO Arbitration and
Microsoft Corporation v. Troy C. Montalvo
Case No. D2004-0109
1. The Parties
The Complainant is Microsoft Corporation, Redmond, Washington of United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Troy C. Montalvo, Corbin City, New Jersey of United States of America.
2. The Domain Names and Registrar
The disputed domain names <microsftmall.com> and <msnmall.com> are registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2004. On February 11, 2004, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain names at issue. On February 12, 2004, Network Solutions, Inc. Registrar 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 Complainant satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the 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 February 13, 2004. In accordance with the Rules, Paragraph 5(a), the due dates for Response was March 4, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2004.
The Center appointed Peter J. McGovern as the sole panelist in this matter on March 11, 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. To date, no response has been received from Respondent.
4. Factual Background; Parties Intentions
a. The Trademark
The Complaint is based on the Complainant’s alleged ownership of the rights in the marks "MICROSOFT" and "MSN" which the Complainant maintains is identical or is confusingly similar to the domain names. Microsoft is a well-known, world wide 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.
The Complainant has obtained trademark registrations in numerous countries for the MICROSOFT Marks in several classes of goods and services, including the United States Registrations. The Complainant provided the Panel with registration certificates for these marks. (Complaint Exhibits D and E)
b. Jurisdictional Basis
The dispute is within the scope of the Policy, and the single member Panel has jurisdiction to decide the dispute. The Registrar’s registration agreement incorporates the policy by reference.
On pages 1 and 2 of its Complaint, the Complainant avers that each of the three requirements of paragraph 4(a) of the Policy has been satisfied.
c. The Complainant
- The Complainant is a well-known, world wide provider of computer software and related products and services, including products for use on the Internet and for developing Internet software, online services, and information delivered via the Internet. Since its inception in 1975, Microsoft has created software and Internet services for use in the workplace, home, and education.
- In connection with the MICROSOFT Mark, Microsoft has established Internet websites and registered names comprised of the MICROSOFT Mark, including "www.microsoft.com" and "www.microsoft.net." In addition, the Complainant also offers its numerous goods and services under the MSN Mark which the Complainant uses to promote, among other things, shopping services offered to the public at Internet websites located at domain names comprising of the MSN Mark, such as "www.msn.com" and "www.msnshopping.com."
- Microsoft Complainant spends substantial time, effort and money advertising and promoting the MICROSFT Marks throughout the world.
- Complainant alleges that the domain names in question <microsoftmall.com> and <msnmall.com> are confusingly similar to the MICROSOFT Marks and the current registrant, the Respondent, has no rights or legitimate interest in the domain names.
- Respondent has registered and used the domain names in bad faith.
- In or about November of 2003, Complainant discovered that Respondent had registered the <microsftmall.com> domain name and was using it to promote a commercial website. In or about December of 2003, Complainant discovered that Respondent had also registered the <msnmall.com> domain name and was using it to "point" to the commercial website located at "www.microsoftmall.com."
- Complainant sought to stop Respondent’s activity through direct mail and sought to resolve this matter informally.
- Complainant alleges that Respondent offered to transfer the domain registrations if Complainant agreed to pay $7,500 (U.S.D.).
- Complainant alleges the infringing domain names are identical or confusingly similar to Complainant’s marks.
- Complainant alleges Respondent has no legitimate interest in infringing domain names and that Respondent is not using the infringing domain names in connection with a bona fide offering of goods or services.
- Complainant alleges that Respondent has registered and used the infringing domain names in bad faith and uses the alleged infringing domain names to attract Internet traffic to its own commercial site.
- Complainant alleges the infringing domain names incorporate the famous MICROSOFT Marks and neither Respondent nor the services it offers has any relationship or affiliation with the Complainant Microsoft.
d. The Response
As noted above, Respondent is in default pursuant to Paragraph 5(e) and 14 of the Rules, and Paragraph 7(c) of the Supplemental Rules because no response was received from Respondent by the applicable deadline.
Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for Complainant. Rather, under Paragraph 4(a) of the Policy, it remains Complainant’s burden to establish that all three of the required criteria for a transfer of the domain names or other remedy have been met.
Under Paragraphs 5(e) and 14(a) of the Rules, the effect of a default by Respondent is that the Panel shall proceed to a decision on the Complaint. Under Paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate.
5. Discussion and Findings
a. Regulations Applicable to Consideration of the Merits
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Paragraph 15(a) of the Rules. In the Panel’s view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the domain names, each of the following:
(i) The domain names are identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of each of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the domain names for purposes of Paragraph 4(a)(ii).
b. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the domain names, such as use or preparation to use the domain names prior to notice of the dispute, being commonly known by the domain names, or making legitimate noncommercial or fair use of the domain names.
Moreover, as discussed below, Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question Complainant’s argument that Respondent has acted in bad faith.
c. Complainant’s Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
Complainant has proved that it is the owner of the rights in trademarks "MICROSOFT" and "MSN". Complainant’s registration of its marks establishes the presumption of the validity of the marks under the United States law. (Complaint Exhibits D and E); 15 U.S.C. § 1057(b). Additionally, the registrations constitute constructive notice to all other parties of Complainant’s ownership of the marks. 15 U.S.C. § 1072.
A domain name is confusingly similar to a trademark when the domain name incorporates
the mark in its entirety. Minnesota Mining & Manufacturing v. JonLR,
WIPO Case No. D2001-0428 (May 30, 2001).
In this matter, the Respondent’s domain names incorporate the MICROSOFT Marks in their entirety. The Respondent has merely added the word "mall" to the end of each of the MICROSOFT and the MSN marks. It is apparent that the Respondent’s domain names are confusingly similar to the MICROSOFT Marks and the Internet addresses for the Microsoft websites.
Here, confusion will occur whenever an Internet user seeking an official Microsoft
website is diverted to the "microsoftmall" website, as a result of
Respondent’s incorporation of the MICROSOFT Marks into the domain names. This
confusion, even if dispelled causes harm to Microsoft and its reputation. See,
e.g. Ticketmaster Corp. v. Polasnki, WIPO
Case No. D2002-0166 (April 8, 2002).
(ii) Whether Respondent has Rights or Legitimate Interest in the Domain Names
There is no evidence in the record that Respondent has any legitimate interest in the domain names. Complainant states in the Complaint that the Respondent has no rights or legitimate interest in the domain names. This contention is un-rebutted and the Panel finds it credible.
The Panel concludes that none of the three illustrative circumstances set forth in Paragraph 4(c) of the Policy demonstrates any rights or legitimate interests in the domain names on the part of the Respondent.
The Respondent has not used the Respondent’s domain names in connection with
a bona fide offering of goods or services. The use of the domain name that is
confusingly similar to another’s trademark in connection with goods and services
unrelated to that mark does not constitute a bona fide offering where the registrant
has no other legitimate right to use the mark. Telstra Corporation Limited
v. Nuclear Marshmallows, WIPO Case No.
D2000-0003 (February 18, 2000).
The Panel finds the Respondent has no connection or affiliation with Microsoft and has not received any license or consent, express or implied, to use the MICROSOFT Marks in a domain name or in any other manner. In addition, as asserted by Complainant, the Respondent does not sell MICROSOFT or MSN products or services on its site. Instead, Respondent appears to have registered and used the domain names for the sole purposes of diverting Internet users from official Microsoft websites to "www.microsoftmall.com" where products unrelated to MICRSOFT or MSN, are offered for sale. The Panel finds the Respondent is not making a legitimate or bona fide use of the Respondent’s domain names.
The Complainant asserts that Respondent is not commonly known by the Respondent’s domain names. The Panel accepts as true the Complainant’s assertion that based on a search of the online trademark database maintained by the USPTO, Respondent has not registered or applied to register the worlds "microsoftmall" or "msnmall" as a trademark in the United States which is where Respondent and his business are located.
The Panel finds Respondent generates no legitimate interest in the Respondents domain names by infringing the MICROSOFT and MSN Marks and unfairly capitalizing on the good will in the MICROSOFT Marks.
Lastly, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service marks at issue. See Dispute Policy paragraph 4(c)(iii). The Panel accepts the Complainant’s assertion that the Respondent’s website which purports to offer for sale thousands of products is a commercial website. Respondent’s use of the domain names does not qualify as a "noncommercial" use under paragraph 4(c)(iii) of the Dispute Policy.
(iii) Registration and Use in Bad Faith
Complainant is required to establish that Respondent has registered and used the domain names in bad faith.
Paragraph 4(b) of the Policy sets out for illustrative circumstances of registration in use of a domain name in bad faith.
Under policy 4(b)(i) Complainant states that the Respondent may have registered the domain names for the purpose of selling them for a profit. The Panel finds that pursuant to the declaration of Courtney Stuart-Alban, Esq., (Complaint Exhibit L) Respondent informed Ms. Stuart-Alban that he would transfer Respondent’s domain names to Microsoft, only if Microsoft agreed to pay him $7,500 (U.S.D.).
The Panel finds the evidence of bad faith is also evidenced under 4(b)(iv)
of the policy. The Panel finds Respondent using the domain names to attract
Internet traffic to his own commercial site. Such use of a domain names which
are so obviously connected with such well-known products by someone with no
connection with the products suggests opportunistic bad faith; Microsoft
Corporation v. Charlie Brown, WIPO Case
No. D2001-0362 (August 16, 2001) (holding such "conduct alone
creates a prima facie inference of bad faith"); Novus Credit Services,
INC. v. Personal, WIPO Case No. D2000-1158
(November 29, 2000) (where subject domain name is so obviously connected
with the Complainant and its services, its very use by someone with no connection
with the Complainant suggests "opportunistic bad faith.")
The Panel finds that the Respondent’s domain names incorporate the famous Microsoft Marks and neither Respondent nor the services it offers has any relationship or affiliation with Microsoft. Respondent’s use of the domain names to channel Internet traffic to Respondent’s website offering for sale numerous of commercial products evidences its bad faith intent to use the MICROSOFT Marks for Respondent’s commercial gain.
The Panel concludes that Respondent has registered and used the domain names in bad faith pursuant to paragraph 4(b) of the Policy.
In light of the findings and analysis by the Panel, the Panel decides that the Complainant has met its burden of proving its rights in the Microsoft Marks and that 1.) Microsoft is the owner of the trademarks; 2.)The domain names are confusingly similar to Complainant’s trademarks "MICROSOFT" and "MSN"; 3.) Respondent has no rights and no legitimate interest in respect to the domain names; 4). The domain names have been registered and are being used by Respondent in bad faith.
Accordingly, pursuant to paragraph 4(i) of the policy and Rule 15, the Panel orders that the domain names <microsoftmall> and <msnmall> be transferred to the Complainant.
Peter J. McGovern
Dated: March 19, 2004