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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Luong Xuan Vinh

Case No. D2007-0580

1. The Parties

The Complainant is Microsoft Corporation of Redmond, United States of America, represented by Baker & McKenzie, LLP, Vietnam.

The Respondent is Luong Xuan Vinh of Hanoi, Vietnam.

2. The Domain Name and Registrar

The Disputed Domain Name <microsoftvietnam.net> (“the Disputed Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2007. On April 18, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On April 19 2007, OnlineNic, Inc. d/b/a China-Channel.com 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”).

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 May 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2007. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on May 25, 2007.

Even though the Respondent did not submit any response in the proceedings, he wrote in an email to the Center dated May 14, 2007, that he agreed to “discuss and negotiate with Microsoft’s representative to transfer the microsoftvietnam.net domain dispute [sic]” and asked the contact details of the Complainant. In an email of May 16, 2007, to Complainant’s counsel in these proceedings, the Respondent declared “I have sent you a letter for a week ago but I did not receive any respond [sic]. I agree to transfer this domain for Microsoft and Microsoft Vietnam. Please let me know that, how [sic] I can communicate with Microsoft’s representative” to which Complainant’s counsel answered in an email of same date that he was on a business trip and that he would touch base with the Respondent as soon as possible. By an email to the Center dated May 26, 2007, the Respondent explained that he had tried to contact Complainant’s counsel “at least two times before the deadline” and that Complainant’s counsel would have agreed to arrange a meeting with him but that he would not have heard back from him since that time. The Respondent consequently asked the Center what he had to do (“please let me know about this case, what I should do?”). It consequently results from these exchanges of emails that no settlement of the dispute was reached.

The Center appointed Jacques de Werra as the sole panelist in this matter on June 28, 2007. 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 manufactures, markets and sells computer software and related products and services, including products and services designed for use on the Internet, under the MICROSOFT trademark. Since its inception in 1975, the Complainant has created software and developed services for use in education, the workplace and the home.

The Complainant’s products and services include 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 public essentially under the MICROSOFT trademark which is registered in virtually every country in the world. The MICROSOFT trademark is protected in Vietnam, which is the country where the Respondent is located, by the following trademark registrations:

Mark

International Class

Registration No.

Registration Date

MICROSOFT

9, 16

6765

November 26, 1992

MICROSOFT

41, 42

9722

November 27, 1992

MICROSOFT

38

18996

November 14, 1995

MICROSOFT

9

30606

March 31, 1999

MICROSOFT.NET

9, 16, 38, 42

50520

June 20, 2003

The Complainant submits that it has spent substantial time, effort and money advertising and promoting the MICROSOFT mark throughout the world. As a result, the MICROSOFT mark has become distinctive and well known. Based on a ranking referred to by the Complainant (published by Business Week and Interbrand), the MICROSOFT mark is the second most valuable brand in the world. See The 100 Top Brands, Business Week, August 2, 2004, at 68.

As claimed by the Complainant in these proceedings, numerous previous UDRP WIPO panels have recognized that the MICROSOFT mark is famous. See, e.g., Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039 (noting that the MICROSOFT mark was 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”); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (characterizing the MICROSOFT mark as “famous”); Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818 (acknowledging the “strong reputation and renown” of the MICROSOFT and MSN marks).

The Complainant owns 1885 Internet domain names comprising the MICROSOFT trademark, including “www.microsoft.com” and “www.microsoft.com.vn” (for Vietnam). The Complainant has also set up a subsidiary entity (Microsoft Vietnam) in Hanoi.

The Complainant’s MICROSOFT trademark was adopted and has become famous long before the Disputed Domain Name was registered (on December 31, 2004).

The Respondent is an individual domiciled in Hanoi, Vietnam and is listed as the legal representative of a Vietnamese company called S.I.S. Vietnam Joint Stock Company which operates a website at “www.sisvn.com” and is headquartered in Hanoi, Vietnam.

The Disputed Domain Name was offered for sale on a domain name auction website “www.raobandomain.com” for USD 1000 with a starting date for the sale on September 19, 2005 (as resulting from a printout of a webpage submitted by the Complainant dated October 6, 2005). It was subsequently offered for sale (as resulting from a printout of the webpage dated April 5, 2007) on the same website for USD 500 with a starting date on April 4, 2007, by a certain Mr. Luong who appears to be the Respondent. In such offer for sale, it was stated (in the English translation of the original Vietnamese version provided by the Complainant) “with this website, you may become a representative of operations in respect of Microsoft’s products in Vietnam, act as an agent for Microsoft, and activities relating to such products [sic]”.

The Disputed Domain Name is not currently activated and has not been actively used in the past by the Respondent since its registration on December 31, 2004 (based on the uncontradicted assertions of the Complainant).

5. Parties’ Contentions

A. Complainant

The Complainant relies on the registration and use of its numerous trademarks and domain names containing the word “microsoft” and asserts that the Disputed Domain Name is confusingly similar to them. In this context, the Complainant emphasizes that the addition of the geographic identifier “Vietnam” to the MICROSOFT trademark as set forth in the Disputed Domain Name does not avoid the likelihood of confusion with its famous MICROSOFT trademark.

The Complainant further contends that the lack of a legitimate interest of the Respondent with respect to the Disputed Domain Name is shown by the facts that the Complainant’s MICROSOFT trademark is well-known in Vietnam where the Respondent is located and that the Respondent consequently knowingly registered a domain name that infringes on Complainant’s trademark and trade name rights. In addition, the lack of legitimate interest is evidenced by the fact that the Respondent has not been authorized to use the Complainant’s trademarks and has not used, or demonstrated preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services and that the Respondent has not been commonly known by the Disputed Domain Name and has not operated a business utilizing the Disputed Domain Name.

The Complainant finally claims that the Disputed Domain Name has been registered and is being used in bad faith because the Respondent offered it for sale for an amount exceeding the out-of-pocket expenses related to it. The Complainant further alleges that the offer for sale of the Disputed Domain Name on a public auction site constitutes a strong inference of use in bad faith and that the passive holding of the Disputed Domain Name constitutes a showing of such bad faith use, whereby the Disputed Domain Name was registered on December 31, 2004, and it does not seem to have been actively used since then.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

In cases in which a respondent unilaterally agrees to transfer the disputed domain name to the complainant, it has been held by previous panels that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements” (of the Policy). See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 which is cited and followed by Valero Energy Corporation , Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336; see also Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207.

However, in this case, it is doubtful that the Respondent unilaterally and unconditionally agreed to transfer the Disputed Domain Name to the Complainant. In an email to the Center dated May 14, 2007, the Respondent wrote that he agreed to “discuss and negotiate with Microsoft’s representative to transfer the microsoftvietnam.net domain dispute [sic]”. Subsequently, in an email to Complainant’s counsel of May 16, 2007, the Respondent referred to a letter that he sent to Complainant’s counsel which allegedly remained unanswered and wrote in this email that he wanted to get in communication with the Complainant. As a result, the impression arises that the Respondent’s intention was to negotiate with the Complainant the conditions of transfer of the Disputed Domain Name and that he did not unilaterally give his consent to the transfer of the Disputed Domain Name to the Complainant.

Consequently, it cannot be admitted that the Respondent gave a “genuine unilateral consent” to transfer the Disputed Domain Name to the Complainant. It is also clear that no settlement was reached between the parties (which could have lead to the termination of the proceedings pursuant to paragraph 17 of the Rules).

As a result of this, it is required to decide the case on the basis of the criteria of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to the trademark MICROSOFT in various countries and specifically in Vietnam which is the country where the Respondent is located.

A comparison between the Disputed Domain Name and the MICROSOFT trademark of the Complainant shows that the Disputed Domain Name contains the geographic term “Vietnam” which follows the Complainant’s trademark. As properly noted by the Complainant, it is well established that a domain name consisting of a well-known trademark combined with a geographic descriptive designation remains confusingly similar to the trademark at issue. See e.g. Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709 relating to the domain name <thairedbull.com>; Red Bull Gmbh v. Tony Marinelli, WIPO Case No. D2001-0522, relating to the domain names <redbullwesterncanada.com>, <redbullcanada.org> and <redbullcanada.net>, where the panel finding was that “the combination of a trademark with a geographical name is common practice for many domain names and does not exclude confusing similarity”; Inter-IKEA v. Polanski, WIPO Case No. D2000-1614, relating to the domain name <ikeausa.com>; Wal-Mart stores Inc v. Walmarket Canada, WIPO Case No. D2000-0150, relating to the domain name <walmartcanada.com>.

Consequently, the addition of the geographic term “Vietnam” to the trademark MICROSOFT in the Disputed Domain Name does not prevent the finding of confusing similarity between the Disputed Domain Name and the MICROSOFT trademark owned by the Complainant.

As a result, based on the rights of the Complainant on the trademark MICROSOFT and on the confusing similarity between this trademark and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

In this case, the Complainant has essentially contended that the Respondent has not made any use of, or demonstrable preparation to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.

The Respondent has not filed any response in the course of the proceedings so the Respondent has not brought any evidence for supporting its eventual rights or legitimate interests in the Disputed Domain Name.

It may be concluded from the statements and documents filed by the Complainant in these proceedings that the Respondent has not made any active use of the Disputed Domain Name but has rather only offered it for sale.

Based on the unrebutted contentions of the Complainant, the Panel is prepared to find that the Respondent has never been authorized by the Complainant to use the MICROSOFT trademark in any way even though the Respondent at one point while offering the Disputed Domain Name for sale claimed that the buyer of the Disputed Domain Name could “become a representative of operations in respect of Microsoft’s products in Vietnam, act as an agent for Microsoft, and activities relating to such products [sic]”.

Accordingly, the Panel finds that the Respondent has no right or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 . The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Complainant claims that the Respondent would be holding the Disputed Domain Name for the only purpose to sell it as evidenced by the offers for sale of the Disputed Domain Name on a domain name auction website as documented by the Complainant, thereby referring to paragraph 4(b)(i) of the Policy.

However, the Complainant has not brought any evidence showing that the Respondent would have offered the Disputed Domain Name for sale to the Complainant or to one of its competitors. Consequently, no circumstances indicating that the Respondent registered the Disputed Domain Name (primarily) for the purpose of selling it to the Complainant or one of its competitors have been established. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 and AT&T Corp v. rnetworld, WIPO Case No. D2006-0569.

Nevertheless, even though the Respondent’s conduct may not fall squarely within the scope of paragraph 4(b)(i) of the Policy, the attempts of the Respondent to sell the Disputed Domain Name through an auction website are still indicative of bad faith. See AT&T Corp v. rnetworld, WIPO Case No. D2006-0569 referring to Reckitt Benckiser AG v. Nazim Oren, WIPO Case No. D2002-0286.

In addition, the Respondent’s bad faith may also be inferred from the fact that he registered the Disputed Domain Name incorporating the Complainant’s famous trademark, despite having no connection with the Complainant. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968 citing Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163 (holding that Respondent’s domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

Finally, the passive holding of the Disputed Domain Name which appears to have never been actively used by the Respondent also constitutes evidence of bad faith. See eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 relating to the domain name <ebaykorea.com>.

For all these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of the Policy.

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 <microsoftvietnam.net> be transferred to the Complainant.


Jacques de Werra
Sole Panelist

Dated: July 12, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0580.html

 

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