Microsoft Corporation v. Paul Horner

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Paul Horner

Case No. D2002-0029

1. The Parties

The Complainant is Microsoft Corporation, a corporation organized in the State

of Washington, United States of America (USA), with place of business in Redmond,

Washington, USA.

The Respondent is Paul Horner, with address in Laveen, Arizona, USA.

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

The disputed domain name is <microsoftsite.com>.

The registrar of the disputed domain name is Registrars.com, with business

address in San Francisco, California, USA.

3. Procedural History

(a) The Complainant initiated the proceeding by the filing of a complaint via

e-mail received by the WIPO Arbitration and Mediation Center ("WIPO")

on January 14, 2002, and via courier mail received by WIPO on January 17,

2002. Complainant paid the requisite filing fees. On January 18, 2002, WIPO transmitted

a Request for Registrar Verification to the registrar, Registrars.com, with

the Registrar’s Response received by WIPO on January 23, 2002.

(b) On January 24, 2002, WIPO transmitted notification of the complaint and

commencement of the proceeding to Respondent via e-mail and courier mail.

(c) On February 11, 2002, Respondent’s response was received via e-mail by

WIPO, and on February 13, 2002, Respondent’s response was received in hardcopy

by WIPO. Respondent also transmitted its response to Complainant.

(d) On February 15, 2002, WIPO 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 February 17, 2002, the undersigned transmitted via

telefax the executed Statement and Declaration to WIPO.

(e) On February 18, 2002, Complainant and Respondent were notified by WIPO

of the appointment of the undersigned sole panelist as the Administrative Panel

(the "Panel") in this matter. WIPO notified the Panel that, absent

exceptional circumstances, it would be required to forward its decision to WIPO

by March 4, 2002. The Panel received a hard copy of the file in this

matter by courier from WIPO.

The Panel has not received any 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

Complainant is the holder of numerous trademark and service mark registrations

for the term "MICROSOFT" and various "MICROSOFT"-formative

marks on the Principal Register of the United States Patent and Trademark Office

(USPTO), including No. 1200236, dated July 6, 1982, covering computer programs

and computer programming services. "MICROSOFT" and "MICROSOFT"-formative

trademarks and service marks are registered in trademark offices in countries

other than the United States. (Complaint, para. 10 & Exhibit D) The "MICROSOFT"

mark is well known in the United States and other countries. The rights of Complainant

in the "MICROSOFT" mark have previously been determined by this sole

panelist [1], and by other administrative

panels making determinations under the Policy. Respondent has not contested

Complainant’s rights in the "MICROSOFT" mark.

Complainant maintains an active commercial website at Internet address (URL)

<www.microsoft.com>. This website is visited by a substantial number of

Internet users.

According to the Registrar’s (Registrars.com’s) verification response to WIPO,

dated January 23, 2002, "Paul Horner" is the listed registrant of

the disputed domain name <microsoftsite.com>. According to that verification,

"Horner, Paul" is also the Administrative Contact for that name. According

to a Registrars.com WHOIS database printout submitted by Complainant, the record

of registration for the disputed domain name was created on April 17, 2000,

(Complaint, Annex B).

The disputed domain name has been used to direct Internet users to a website

at Internet address <www.microsoftsite.com>. As of September 27, 2001,

that website was headed with a banner "Microsoftsite". The content

on the center of the home page stated "Win Free Porn for Life", and

included, inter alia, a pornographic photograph with label "The

Hottest Slutty Lesbians on the Net!! Stills, Videos and more!!" The home

page included a list headed "Microsoft’s Favorites", with links such

as "Microsoft’s bitches". It also included lists for "Hot Porn"

and "Other Stuff Besides Porn" (Complaint, Annex F). The content on

the <www.microsoftsite.com> website changed from time to time. As of December

31, 2001, the home page included a picture of "My dog, Microsoft"

and a young man labeled "Me, the owner of Microsoft", along with multiple

links to pornographic websites, and a posting of a cease and desist and transfer

demand from Complainant’s counsel to Respondent. (Id., Annex E)

By courier mail and e-mail dated October 11, 2001, Complainant (via counsel)

sent a cease and desist and transfer demand to Respondent. That demand was posted

on <www.microsoftsite.com>, headed by the text "Microsoft has been

viewing my site for the last year now and for some reason NOW has sent me a

nasty-gram. I just want to get one thing straight here. I own Microsoft. This

is Microsoft’s site. This is the Official Microsoft Site." (Id.,

Annexes H & I)

The Service Agreement in effect between Respondent and Registrars.com subjects

Respondent to Registrars.com’s dispute settlement policy, the Uniform Domain

Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and

with implementing documents approved by ICANN on October 24, 1999. The Uniform

Domain Name Dispute Resolution Policy (the "Policy") requires that

domain name registrants submit to a mandatory administrative proceeding conducted

by an approved dispute resolution service provider, of which WIPO is one, regarding

allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is the holder of rights in the "MICROSOFT"

trademark and service mark, that such mark is well known, and that the disputed

domain name is confusingly similar to its mark.

Complainant alleges that Respondent has no rights or legitimate interests in

the disputed domain name. Complainant has not authorized Respondent to use its

mark. Complainant indicates that Respondent has used its mark in the disputed

domain name to publicize his own website, which "offers links to various

pornographic websites that are not provided by, or in any way affiliated with,

Microsoft."

Complainant states that Respondent has used the disputed domain name in bad

faith. It argues that Internet users will enter Respondent’s Internet address

believing that they will be directed to Complainant’s commercial website, and

may conclude that Complainant is promoting pornography. This is argued to harm

Complainant’s reputation. Complainant cites Hasbro, Inc. v. Internet Entertainment

Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996) and Toys R Us,

Inc. v. Akkaoui, 40 U.S.P.Q. 1836 (N.D. Cal. 1996) in support of its argument.

Even if Internet users conclude that the website is not sponsored by or affiliated

with Complainant, they will be frustrated in their efforts to reach Complainant’s

genuine website. Complainant asserts that "mousetrapping" at Respondent’s

website diverts Internet users from a link labeled for Complainant’s products

to a series of pornographic links.

Complainant requests the Panel to direct the Registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent argues, "any remotely non-retarded person will know Microsoftsite.com

is not the actual Microsoft.com site and is only there to serve as one of the

millions of humorous and satirical sites on the Internet ‘making fun’ of the

Software Giant".

Respondent does not contest that the disputed domain name is confusingly similar

to the "MICROSOFT" mark, but contends that the confusion is promptly

dispelled upon reaching his home page. He states that his intention is to use

the disputed domain name to direct Internet users to his website where he expresses

himself through satire that is protected expression under the U.S. Constitution.

Respondent states, "I made no attempt to resolve the matter informally.

Microsoft made no offer to buy the name. They requested that I hand the name

over for free. I didn’t want to do that. I did want to post

their letter online to add to the other humorous articles and pictures on my

site".

Respondent requests the Panel to reject Microsoft’s request for an order to

transfer the disputed domain name.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this administrative proceeding.

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), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary

to notify the Respondent of the filing of the complaint and initiation of these

proceedings. Respondent has filed a detailed response to the complaint indicating

that he received notice and was afforded an adequate opportunity to respond.

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 use, 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.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

Complainant holds rights in the well-known trademark and service mark "MICROSOFT".

This fact has been determined in prior administrative proceedings, and is not

disputed by Respondent. Respondent concedes that the disputed domain name <microsoftsite.com>

is confusingly similar to Complainant’s mark [2],

basing his defense in this proceeding on an asserted right to express himself

through satire.

The Panel finds that Respondent has registered a domain name that is confusingly

similar to a trademark and service mark in which Complainant has rights. For

reasons of administrative economy, the Panel need not further elaborate grounds

for findings in this regard. Complainant has satisfied the first element for

a finding of abusive domain name registration and use under the Policy.

The second element of a claim of abusive domain name registration and use is

that the respondent has no rights or legitimate interests in respect of the

domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several

ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are 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." (Policy, paragraph 4(c))".

It is common ground between the parties that Respondent has not satisfied the

criteria of paragraph 4(c)(i) or (ii).

Respondent asserts that he is making legitimate noncommercial or fair use of

the domain name because his website is used to satirize Complainant’s business.

The essence of his argument is that he is "making fun" of Complainant

by attracting Internet users with the "MICROSOFT" mark, but instead

of providing Microsoft content on his website, he exhibits pornography and provides

links to pornographic websites.

In some respects, Respondent’s legitimate non-commercial use defense bears

resemblance to that accepted by the First Circuit Court of Appeals in L.L.

Bean, Inc. v. Drake Publishers, Inc., 811 F. 2d 26 (1st Cir.

1987), cert. denied, 483 U.S. 1013 (1987). In that case, the publisher of a

pornographic magazine used a trademark without the consent of its holder to

create a parody. The trademark holder typically used its mark in commerce in

connection with a catalogue advertising outdoor clothing. The parody consisted

of using "L.L. Beam’s Back-To-School-Sex-Catalog" as a title on a

two-page article portraying nude models in sexually explicit positions "using

‘products’ that were described in a crudely humorous fashion." 811 F. 2d

27. The Court of Appeals said that the magazine’s use was noncommercial, editorial

and artistic, labeled as humor and parody, took up two pages of a 100 page issue,

and "neither the article nor appellant’s trademark was featured on the

front or back cover of the magazine" (811 F. 2d at 32). The Court held

that under these circumstances, the right of free expression trumped the rights

of the trademark holder under a state anti-dilution statute.

By contrast, in the present proceeding Respondent is using Complainant’s trademark

and service mark as the principal identifier of his website. Unlike in L.L.

Bean where the trademark was merely a small part of a larger enterprise, and

not used to directly attract consumers to the magazine, in the present circumstances

the trademark is used precisely to attract Internet users. It defines the location

of Respondent’s website on the Internet. In the present circumstances, Respondent’s

website is not labeled humor or parody.

Perhaps the critical distinguishing factor from L.L. Bean is that individuals

reading through a pornographic magazine presumably know what they are doing.

Those readers expect to find pornographic pictures, and in L.L. Bean the trademark

holder’s mark is merely a device to create interest in a particular photo-spread.

By way of contrast, in this case the typical Internet user entering <www.microsoftsite.com>

in their browser would not expect to find photos of "the hottest slutty

lesbians on the web". The Internet user is immediately exposed to materials

that he or she (including children) may find offensive, based upon Respondent’s

use of Complainant’s mark. This is damaging to Complainant’s business interests

in its mark.

The issue in this proceeding is not whether Respondent is free to insult or

parody Complainant on the Internet. The issue is not the cultural value of pornography.

The issue is whether Respondent may use Complainant’s mark in the disputed domain

name as the identifier and advertising vehicle to attract Internet users to

his particular forum. By using Complainant’s mark in a domain name that conveys

no indication that the address is directed to explicit pornographic content,

he diverts Internet users to a website that may substantially offend some portion

of Complainant’s customers and prospective customers. Unlike in L.L. Bean, the

potentially offensive content is not tied to particular products or services

marketed by Complainant. Unlike in L.L. Bean, the Internet user has not intentionally

chosen to view pornography.

The Panel considers that the disputed domain name is not being used for a legitimate

non-commercial parody of Complainant’s mark and business. The Panel concludes

that Respondent has not established rights or legitimate interests in the disputed

domain names within the meaning of paragraph 4(c)(iii) of the Policy.

The Policy indicates that certain circumstances may, "in particular but

without limitation", be evidence of bad faith (Policy, paragraph 4(b)).

Among these circumstances are that a respondent "by using the domain name,

… [has] intentionally attempted 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 [respondent’s] website or location of a product or service on [its] website

or location" (id., paragraph 4(b)(iv)).

The Panel has determined that the disputed domain name is confusingly similar

to Complainant’s mark. Respondent registered and has used the disputed domain

name for the purpose of directing Internet users to his website by creating

confusion regarding Complainant’s sponsorship of or affiliation with his site.

Respondent uses pornographic photos on his website to publicize links to additional

websites commercially displaying pornography. Respondent is using Complainant’s

mark for commercial purposes. Although Respondent disclaims directly profiting

from the use of Complainant’s mark, the owners of the linked pornographic website

are so profiting, and Complainant is effectively acting as the agent of those

owners. Respondent’s conduct constitutes bad faith within the meaning of paragraph

4(a)(iii) of the Policy.

Complainant has thus satisfied all three elements necessary for a finding that

Respondent has engaged in abusive registration and use of the disputed domain

name within the meaning of paragraph 4(a) of the Policy.

The Panel will direct the registrar to transfer the disputed domain name to

Complainant.

7. Decision

Based on its finding that the Respondent, Paul Horner, has engaged in abusive

registration and use of the domain name <microsoftsite.com> within the

meaning of paragraph 4(a) of the Policy, the Panel orders that the domain

name <microsoftsite.com> be transferred to the Complainant, Microsoft

Corporation.

Frederick M. Abbott

Sole Panelist

Dated: February 27, 2002

Footnotes:

1. See Microsoft Corporation v. Microsof.com

aka Tarek Ahmed, WIPO Case No. D2000-0548,

decided July 21, 2000.

2. For example, Respondent states, "My Microsoft.site

com is satire so the fact that the domain name <microsoftsite.com> is

identical or confusingly similar to the MICROSOFT mark doesn't mean anything."

Response, para. 22.

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