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WIPO Arbitration and
Microsoft Corporation v. Maganda Industries and/or Douglas Morris a.k.a. Douglas Morrison
Case No. DPH2004-0001
1. The Parties
The Complainant is Microsoft Corporation, Redmond, Washington, of United States of America, represented by Quisumbing Torres Law Firm, Philippines.
The Respondent is Maganda Industries and/or Douglas Morris a.k.a. Douglas Morrison, Pelican Waters, Caloundra, Queensland of Australia.
2. The Domain Name and Registrar
The disputed domain name <hotmail.com.ph> is registered with dotPH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2004. On February 24, 2004, the Center transmitted by email to dotPH a request for registrar verification in connection with the domain name at issue. On February 26, 2004, dotPH 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 1, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the dotPH Domain Name Dispute Resolution Policy, (the "Policy"), the Implementation Rules for dotPH 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 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2004.
The Center appointed Peter G. Nitter as the sole panelist in this matter on March 25, 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
The Complainant is a worldwide provider of computer software and related products and services, including products and services designed for use through the Internet. The Complainant also offers a number of online services for use by Internet users, including the free electronic mail service found at "www.hotmail.com".
This electronic mail service is a free, web-based service that allows users who are online to access email accounts wherever they can find an Internet connection.
The Hotmail electronic mail service, according to the Guinness Book of World Records, had 110 million subscribers by January 2003, and was characterized as the world’s largest free e-mail service.
The Complainant has registered trademark rights to the mark HOTMAIL in several countries around the world.
In the United States of America the Complainant owns U.S. Trademark Registration No. 2.165.601 for the trademark HOTMAIL. The mark was registered on June 16, 1998, having a date of first use in commerce on July 4, 1996. In Australia, the Complainant owns Australian Trademark Registration No. 746004 for the same trademark, with convention priority from April 7, 1997. Theses trademark rights were acquired from the Hotmail Corporation as a result of a 1998 merger.
In the Philippines, the Complainant has been assigned Trademark Application Nos. 41997125606 and 41997125607 for the HOTMAIL trademark.
As mentioned, the Complainant has registered rights to the mark in a number of countries worldwide.
5. Parties’ Contentions
The HOTMAIL trademark has become world famous due to the Complainant’s use and registration of the mark. The Complainant has developed an enormous amount of goodwill in the mark, making it an extremely valuable corporate asset. The mark is "famous" within the meaning of the law of the United States of America and the laws of the Philippines.
The Complainant has actively and continuously protected its’ goodwill in the HOTMAIL mark against infringement, particularly by resort of the ICANN UDRP, with WIPO as service provider.
The domain name in dispute is identical, or at the very least, confusingly similar to the Complainant’s HOTMAIL trademark. The only difference between the Complainant’s own domain name for their Hotmail electronic mail service, <hotmail.com>, and the domain name in dispute, is the ".ph" extension.
Reinforcing the confusing similarity, is the fact that when accessing the website connected to the domain name in dispute, one is merely redirected to the opening page of the Complainant’s website at "www.hotmail.com". However, in the course of redirecting to the Complainant’s website, a pop up window for the website "chat.com.ph" appears. Further links in the pop up window lead to pages featuring content that is apparently the Respondent’s, some of which seemingly were pornographic.
The Respondent has no affiliation to the Complainant, and has not been granted any license or authorization to use the HOTMAIL trademark in a domain name. The Respondent is not authorized to advertise through the Complainant’s websites or otherwise imply affiliation between the Complainant and the pop up window.
The Respondent has not used the trademark in connection with the offering of goods or services.
The Respondent is not using the disputed domain name in a manner that is non-commercial or which constitutes fair use of the trademark HOTMAIL. The Respondent’s sole intent in using the domain name is to mislead Internet users who mistakenly type the Complainant’s website "www.hotmail.com" with the extension ".ph", to unwittingly patronize the contents of the Respondent’s "chat.com.ph" pop up window.
The Respondent has not applied for or obtained any trademark registration for the HOTMAIL trademark in any jurisdiction.
The Respondent thus has no rights or legitimate interest in the domain name.
The Respondent has clearly registered and is using the domain name in bad faith. Respondent is intentionally attempting to attract, for commercial gain, Internet users to unwittingly patronize the Respondent’s website or other online locations linked through the use of a pop up window. This is done by creating a likelihood of confusion with the Complainant’s trademark, so as to imply some form of source, sponsorship, affiliation or endorsement by Complainant to the Respondent’s content on his "chat.com.ph" site.
The Respondent’s use of the domain name, which is virtually identical to the Complainant’s trademark, constitutes clear evidence of bad faith. The fact that the Internet user accessing the disputed domain name is redirected to the Complainant’s website where the Respondent unauthorized has inserted a pop up window, shows that the Respondent is aware and has actual knowledge of the goodwill created and developed by the Complainant in the HOTMAIL trademark, and that he is seeking to unjustly exploit this goodwill.
Another indication of the Respondent’s bad faith is the fact that he apparently has infringed also other trademark rights in the same manner.
A further indication of bad faith is the fact that the Respondent listed a Hotmail e-mail address with dotPH when the domain name in dispute was applied for registration. This proves that the Respondent had knowledge of the Complainant’s prior use of the <hotmail.com> domain name.
The Complainant on October 7, 2003, sent the Respondent a letter demanding him to cease and desist the infringing activities. The letter was followed up by another letter on October 30, 2003. The Respondent has not replied to these letters.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the legal owner of the trademark registrations U.S. Trademark Registration No. 2.165.601 dated June 16, 1998, Australian Trademark Registration No. 746004 with priority from April 10, 1997, and several other registrations around the world, for the trademark HOTMAIL.
The domain name in dispute consists of this trademark with the addition ".com.ph". The domain name is thus not identical to the Complainant’s trademark. The question is then whether the domain name is confusingly similar to the trademark.
The term "hotmail" must be said to be the dominant and distinctive component of the domain name. This term is identical to the Complainant’s trademark, which must be said to be very famous, especially to Internet users as it is the name of probably the world’s largest free email service on the Internet. The dominant "hotmail" comes first in the domain name, and thus leaves the impression that the domain name is in some way linked to the owners of the HOTMAIL trademark.
Previous cases under the Internet Corporation for Assigned Names and Numbers
Uniform Domain Name Dispute Resolution Policy ("ICANN UDRP"), have
shown that simply adding a common or generic term to a famous trademark is not
sufficient to give the domain name an individual meaning, and prevent the overall
impression that the domain name has some sort of connection to the Complainant,
see Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO
Case No. D2000-0477, PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC
Services, WIPO Case No. D2001-0174,
Nordiska Föreningen för Falun Dafa and Eastern US Buddha’s Study
Association WIPO Case No. DNU2004-0001 and
NAF Case No. FA 95404.
The Panel is in some doubt as to whether the terms ".com" and ".ph" can be characterized as generic terms. The terms are not common words as was the case in some of the above-mentioned cases. However, the Panel recognises that the term ".com" is identical to the international Top Level Domain ".com", and that the term ".ph" is the national Top Level Domain of the Philippines.
Considering that the term "hotmail" is clearly the dominant in the domain name, and especially in light of the first added term being identical to the international Top Level Domain under which the Complainant’s website providing the Hotmail e-mail service is registered, ("www.hotmail.com"), the addition of the term ".com" only leaves and even strengthens the impression that the domain name is in someway affiliated to the Complainant.
The term ".ph" of the domain name identifies the national Top Level Domain under which the domain name is registered. The addition of this Top Level Domain leaves the impression that the domain name is the ‘national site’ for the Complainant’s e-mail service.
Thus, the addition of the terms ".com.ph" does not have the necessary distinguishing effect, and these additions to the trademark are not sufficient to prevent the domain name from being confusingly similar to the trademark.
The domain name is thus in violation of the Complainant’s registered Australian trademark HOTMAIL, Australia being the jurisdiction in which the Respondent resides or conducts business cf. the Policy paragraph 2 (b), and also in violation of their trademark rights in several other countries.
Hence, the Panel finds that the domain name in question is confusingly similar to a mark in which the Complainant has rights, and the prerequisite in the Policy, paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
The Panel has considered the assertion made by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue.
The Respondent has, according to the Complainant, not been authorized to advertise in any manner through the Complainant’s websites or to otherwise imply any affiliation between the Complainant and the content on the Respondent’s "chat.com.ph" pop up window.
The Complainant holds that the Respondent has not used the HOTMAIL trademark in connection with the offering of goods or services prior to the Complainant’s first use of it’s trademark. Further, the Complainant holds that neither has the Respondent made a legitimate non-commercial or fair use of the domain name.
The Respondent has not filed any Response arguing that he has rights or legitimate interests in the domain name.
The Panel thus presumes that the Respondent has not been commonly known by the domain name.
The Panel has visited the "www.hotmail.com.ph" website, in order to investigate whether evidence could be found as to the Respondent’s rights or legitimacy of interest in the contested domain name.
At present, the website does no longer appear in the same form as it is presented in the Complaint, Annex I. The website now displays an error message, stating that the page cannot be displayed.
Thus, the site gives no information regarding the Respondent’s possible rights or legitimate interests in the domain name.
Based on the evidence presented by the Complainant, the Panel is however not in doubt that the Respondent has not made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain.
By registering and using a domain name which is very similar to the Complainant’s famous trademark and website, the Respondent is using this similarity to attract users to his own website. This website has, according to Annex I to the Complaint, the form of a pop up window appearing when entering the website connected to the domain name in dispute. According to the Complainant, links from the pop up window led among other things to pornographic material. From Annex I to the Complaint, it also seems that chatting services were offered from the pop up window.
Thus, the Panel has found nothing on or outside the website connected to the domain name, or in the Annexes to the Complaint as being evidence of the Respondent’s rights or legitimate interests in the domain name. Neither has the Respondent submitted a Response stating otherwise.
Hence, the Panel finds that the Respondent does not have rights or legitimate interests in the domain name, and the prerequisites in the Policy, paragraph 4(a)(ii) are therefore fulfilled.
C. Registered and Used in Bad Faith
The domain name registered by the Respondent consists of the domain name of the Complainant’s website, with the addition of the Top Level Domain for the Philippines, under which it is registered.
As the website connected to the disputed domain name no longer exists in the same form as at the time of the Complaint, and the Respondent has not replied to the Complaint, the appearance of the website at the time of the Complaint, as shown in the Complaint’s Annex I, will form the basis for the following discussions.
When accessing the website connected to the disputed domain name, the Internet user was redirected to the current opening page of the Complainant’s website, where Hotmail subscribers can log on to their email accounts. However, in the course of redirecting the user, a pop up window appeared on the site, offering chatting services. The pop up window read; "Blah, Blah, Blah, …chat all you like at CHAT.COM.PH". As mentioned, further links from this pop up window led to pages featuring among other things, content which appeared to be of a pornographic nature.
The redirection of the users to the Complainant’s website, shows that the Respondent is well aware of the name, trademark, website owned by the Complainant. This also means that he must have been fully aware of the significant goodwill built up in the trademark by the Complainant.
That the Respondent was also well acquainted with the e-mail service offered by the Complainant, is proven by the fact that the Respondent registered a Hotmail e-mail address as his contact address with the registrar dotPh, when applying for the domain name registration in question.
The Panel finds that the Respondent’s conduct leaves no doubt that he both registered and used the domain name in bad faith. The Respondent has exploited the goodwill of a world famous trademark and the equally famous website of the Complainant, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute, and by that attract Internet users to his own website or to other online locations.
The practice of attracting Internet users by creating a likelihood of confusion
has been considered evidence of bad faith in several previous panel decisions
under the ICANN UDRP, see for example America Online, Inc. and AOL International
WIPO Case No. D2000-0654, FOCUS
DO IT ALL GROUP and others v. ATHANASIOS SERMBIZIS, WIPO
Case No. D2000-0923 and Edmunds.com, Inc. v. Ult. Search Inc., WIPO
Case No. D2001-1319.
Some of the hyperlinks from the pop up window apparently led to pornographic
material. Using the domain name for displaying links to such material, has in
particular been considered evidence of bad in previous decisions under the ICANN
UDRP, see for example Microsoft Corporation v. Party Night, Inc. d/b/a Peter
Carrington WIPO Case No. D2003-0501
and Edmunds.com, Inc. v. Ult. Search Inc., WIPO
Case No. D2001-1319.
The Respondent’s conduct is clearly motivated by the Respondent’s intent for commercial gain. The domain name is used to attract potential customers to the Respondent’s website and other sites, offering various products and services.
Hence, the Panel finds that the domain name is registered and used in bad faith by the Respondent, and the prerequisites in the Policy, paragraph 4(a)(iii) are fulfilled.
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, <hotmail.com.ph> be transferred to the Complainant.
Peter G. Nitter
Date: April 7, 2004