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Microsoft Corporation v. Charlie Brown

WIPO Case No. D2001-0362

Outcome
Transfer
Domain names
microosoft.com
Complainant
Microsoft Corporation
Respondent
Charlie Brown
Panelist
Nels T. Lippert
Decided
16 Aug 2001
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0362.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Charlie Brown

Case No. D2001-0362

1. The Parties

Complainant: Microsoft Corporation

One Microsoft Way

Redmond, Washington 98052-6399, USA

Represented By: Arnold & Porter

Suzanne V. Wilson, Esq.

Lorelei D. Ritchie, Esq.

Parag Patel, Esq.

777 South Figueroa Street, 44th Floor

Los Angeles, California 90017-5844

Respondent: Charlie Brown

810 Hwy 548

Conway, South Carolina 24527 USA

2. The Domain Name(s) and Registrar(s)

The Domain Name in dispute is <microosoft.com>.

The Registrar for the disputed Domain Name is:

Network Solutions, Inc.

505 Huntmar Park Drive

Herndon, VA 20170-5139

USA

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Policy For Domain

Name Dispute Resolution (the "Policy") and Rules (the "Rules") approved by the

Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999,

and the World Intellectual Property Organization Arbitration and Mediation Center's

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Center";

the "Supplemental Rules").

The Complaint was filed on March 14, 2001. On March 19, 2001, Network Solutions,

Inc. confirmed that the Registrant of the disputed domain name was the Respondent

and that Network Solutions' 5 Service Agreement is in effect.

On March 20, 2001, the Center commenced the Administrative Proceeding and forwarded

a copy of the Complaint to Respondent, the administrative contact, and technical

contact via post, facsimile and e-mail. Respondent did not file a response by

April 8, 2001, and a Notification of Default was issued on April 11, 2001.

The Administrative Panel submitted a Declaration of Impartiality and Independence,

and the Center proceeded to appoint the Panel on May 1, 2001. This Panel finds

the Center has adhered to the Policy and Rules in administering this case.

This decision was originally due May 14, 2001.

4. Factual Background

Complainant, Microsoft Corporation, is a Washington, USA corporation with its

principal place of business in Redmond, Washington, USA.

The Complainant is a well-known, worldwide provider of computer software and

related products and services. Complainant's products and services include computer

operating systems, client/server applications, business and computer productivity

applications, software programming tools, interactive media programs, Internet

platform and development tools, computer input devices, on-line information

and entertainment services, electronic commerce and computer publications.

In connection with its goods and services, the Complainant has registered the

MICROSOFT mark in the United States Patent and Trademark Office in numerous

classes of goods and services. Complainant has also registered in the United

States Patent and Trademark Office trademarks comprising the word MICROSOFT

and other formatives for various goods and services. With respect to the MICROSOFT

registrations, Complainant has registered the mark for such goods and services

as telecommunication services in Class 38, providing information concerning

travel and travel related services over computer networks and global communications

networks in Class 39, providing information in the fields of business and commerce

over computer mark networks and global communications networks in Class 35,

and computers and component parts therefor, computer peripherals, computer keyboards,

computer video control devices, computer software in Class 9 as examples.

The Respondent, Charlie Brown, registered the domain name <microosoft.com>

on May 12, 2000.

5. Parties' Contentions

A. Complainant

The Complainant contends that:

- The Complainant has spent substantial time, effort and money advertising

and promoting the MICROSOFT mark throughout the United States and the world.

As a result, the MICROSOFT mark has become world famous and the Complainant

has developed an enormous amount of goodwill in the mark.

- Complainant has established an Internet website which can be reached through

domain names comprised of the MICROSOFT mark, including <microsoft.com>

and <microsoft.net>. Complainant's website allows computer users throughout

the United States and the world to access information regarding Complainant

and its products and to use and enjoy the Internet services provided by Complainant.

- The disputed domain name is virtually identical to the famous MICROSOFT mark,

the only difference being an extra "o" in the disputed domain name.

- The disputed domain name is confusingly similar to Complainant's own domain

name, and trademarks and is likely to cause confusion among Complainant's customers.

- Respondent has no connection or affiliation with Complainant and has not

received any license or consent express or implied to use the MICROSOFT mark

in a domain name and, therefore, has no legitimate interest in the disputed

domain name.

- The Respondent is intentionally diverting customers of the Complainant through

the use of the disputed domain name which contains a common typo which those

customers might enter by mistake.

- Respondent registered the disputed domain name after Complainant's MICROSOFT

mark was internationally famous.

- There can be no question of Respondent's awareness of the fame of the MICROSOFT

mark when it registered the disputed domain name.

- Respondent registered the domain name <microosoft.com> to increase

the traffic to its website by wrongfully capitalizing on Microsoft's famous

trademark.

- Respondent has intentionally attempted to attract, for commercial gain, Internet

users to its website by creating a likelihood of confusion with Complainant's

MICROSOFT trademark as to the source, sponsorship, affiliation or endorsement

of its website or location of a product or service on its website.

- Respondent has used the <microosoft.com> domain name to divert Internet

traffic away from Complainant and into its own website in order to benefit from

the enormous level of Internet traffic from Internet users seeking the official

Microsoft website <microsoft.com>.

- While the website at issue no longer contains commercial content, Respondent

still maintains complete control over it and Respondent may resume activities

capitalizing upon the famous MICROSOFT mark thereby confusing and frustrating

Microsoft's customers.

- Respondent registered the <microosoft.com> domain name in bad faith.

B. Respondent

Respondent has not filed a response to the Complaint and is in default. By

failing to file a response, Respondent has not denied Complainant's contentions.

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <microosoft.com>

transferred to itself, Complainant must prove the following:

(Policy ¶ 4(a)(i-iii)):

(i) the domain name 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 in respect of the

domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant owns numerous United States trademark registrations for the

MICROSOFT mark some claiming use since 1975. Complainant has also registered

the domain names <microsoft.com> and <microsoft.net> through which

consumers can access information regarding Microsoft and its products and to

use the Internet services provided by Complainant. This Panel has noted that

the <microsoft.com> domain name was created on May 2, 1991, according

to Network Solution's WhoIs record.

The disputed domain name, <microosoft.com> differs by misspelling the

Complainant's established trademark rights in the word MICROSOFT by the addition

of the letter "o" between "micro" and "soft".

Disputed domain names with misspelled variations of trademarks have been held

to be "confusingly similar" in many WIPO cases. For example, in American

Online Inc. v. John Zuccarini (WIPO Case

No. D2000-1495) it is stated that "the mere addition of a minor misspelling

. . . does not create a new or different mark in which the Respondent has rights.

Instead it results in a domain name that is confusingly similar to the Complainant's

mark".

In the Panel's view, the word "microosoft" in the disputed domain name is both

phonetically and visually the same as Complainant's trademark.

Based on this view, and on the previous decisions dealing with misspellings,

the Panel finds the disputed domain name is confusingly similar to the Complainant's

trademark.

The Panel further finds Respondent has no rights or legitimate interests in

the disputed domain name. It is not refuted that Respondent has no connection

or affiliation with Complainant and has not received any license or consent

to use the MICROSOFT mark in a domain name or in any other manner. Nor has it

been demonstrated that the Respondent is commonly known by or has acquired rights

in the domain name. Finally, the Respondent's use of the disputed domain name

deliberately diverts Internet users interested in Complainant or its products

and services who either do not know the correct spelling or unintentionally

make an error when typing in the Complainant's mark or name. This Panel finds

that the Respondent has not offered any evidence of non-commercial or fair use

of the disputed domain name to refute the Complainant's allegations.

According to the Complaint, the Respondent originally used the disputed domain

name to attract Internet users to its website containing prominent commercial

banner advertisements and hyper-links to third party websites which offered

various commercial products and services for sale. This use constituted bad

faith attracting Internet users to a website for commercial gain. More recently,

the website appears to be inactive with only a statement that "Coming soon…The

Anti-Microsoft Website. A non-profit site dedicated to exposing Microsoft's

unfair trade practices". As noted earlier, the Respondent has provided no evidence

that the current website is being employed for any legitimate fair use.

The Respondent's domain name misspelling of the Complainant's trademark is

designed to confuse and take advantage of Internet users who do not know the

correct spelling of the Complainant's mark or name or who mistyped it. Prior

WIPO cases have found that such conduct alone creates a prima facie inference

of bad faith. See Google Inc. v. Namerental.com and Leonard Bensonoff

(WIPO Case No. D2001-0060). Similarly, in Alta

Vista Company v. Saeid Yomtombian (WIPO

Case No. D2000-0937) the Panelist found "the use of misspellings alone is

sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because

the Respondent has used these names intentionally to attract, for commercial

gain Internet users to his website by making a likelihood of confusion with

the Complainant's mark".

Finally, the lack of a response to the Complaint creates an inference that

the Respondent could not provide any good faith use of the disputed domain name.

Therefore, the Panel finds that the Respondent registered and used the disputed

domain name in bad faith.

7. Decision

The Panel concludes that the domain name <microosoft.com> is confusingly

similar to Complainant's trademark, that the Respondent lacks any right or legitimate

interest in the domain name and that the domain name was registered and used

in bad faith. Therefore, this Panel orders that the disputed domain name <microosoft.com>

be transferred to Complainant, Microsoft Corporation.

Nels T. Lippert

Presiding Panelist

Dated: August 16, 2001

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