Microsoft Corporation v. WDW Inc; William Claude Dukenfield

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. WDW Inc. and William Claude Dukenfield

Case No. D2002-0412

1. The Parties

The Complainant is Microsoft Corporation, a Washington corporation located

in Redmond, Washington, United States of America, represented by the law firm

of Arnold & Porter.

The Respondents are WDW Inc. and its technical contact William Claude Dukenfield,

located in New York, United States of America, neither of whom is represented

by counsel. Collectively, the named parties are referred to as "Respondent."

2. The Domain Names and Registrar

The domain names in dispute are <microsoftcertified.com> and <microsoftcertified.info>

(hereinafter the "Domain Names"). Both are registered with Tucows, Inc.

(hereinafter the "Registrar"), located at 96 Mowat Avenue,

Toronto, Ontario, Canada.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999,

the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN

on October 24, 1999, ("the Rules") and the WIPO Supplemental

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

Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was sent by email and hard copy to the Center, to The Registrar,

Inc, and to Glenn Taylor who at the time the Complaint was filed was listed

as the registrant of the Domain Names. By email dated April 30, 2002,

and sent at 6:30 p.m., Mr. Taylor acknowledged to counsel for Complainant

his receipt of the Complaint. The Center acknowledged receipt of the email copy

of the Complaint on May 3, 2002, and received a hard copy of the Complaint

on May 2, 2002.

On May 3, 2002, the Center contacted the Registrar seeking verification that

the Domain Names were registered with the Registrar and also seeking confirmation

that the respondent named in the original complaint, Glenn Taylor, was the registrant

for both Domain Names. By return email dated May 3, 2002, The Registrar

confirmed receipt of the Complaint, confirmed that it was the registrar of the

Domain Names and confirmed that respondent Glenn Taylor was the registrant.

While verifying Glenn Taylor as the registrant, the Registrar also indicated

that the registrant of the Domain Names, according to its records, was WDW,

Inc. of 111 Quality Street, New York with William Claude Dukenfield of

the same address as the administrative and billing contact for the Domain Names.

Upon receipt of the verification from the Registrar, the Center sent a request

for clarification. The Registrar, by email dated May 6, 2002, indicated

that it made a mistake when it said that the original named respondent Glenn Taylor

and the current registrant were the same.

Based on the information received from the Registrar, the Center, on May 7, 2002,

contacted counsel for Complainant advising that the respondent listed in the

original complaint was not the proper party and requesting that Microsoft amend

its complaint listing as the respondent WDW, Inc. The Center required that the

amended complaint be submitted not later than May 12, 2002. Copies

of this notice were emailed by the Center to Glenn Taylor as the original registrant

as well as to WDW, the current registrant of the Domain Names. In response to

that email, the Center received four e-mails, two from Glenn Taylor and two

from WDW.

On May 10, 2002, counsel for Complainant forwarded by email an Amended Complaint

to the Center with copies to the Registrar and to the Respondent. Hard copies

of the Amended Complaint were received by the Center on May 15, 2002.

The Center completed its compliance review on May 16, 2002, and on

that day formally notified the Respondent of the formal institution of the proceeding.

The formal notification advised Respondent that it had until June 5, 2002,

to file a response to the Complaint. Respondent submitted an email in response

to the notification to the Center on May 16, 2002, which did not comply

with the formal requirements that the Center has established for submitting

answers to domain dispute complaints. Thus, on June 7, 2002, the Center

notified the parties that Respondent was in default. On June 19, 2002,

after receiving the statement of impartiality from the panelist, the Center

appointed a Panel to decide the case and requested that the decision be forwarded

by July 3, 2002.

4. Factual Background

The Complainant is the owner of the MICROSOFT mark, which it has been using

since 1975 in connection with computer software and related products and services.

Complainant has trademark registrations in the United States for the mark MICROSOFT.

The Complainant alleges that it has spent substantial time, effort and money

advertising and promoting the MICROSOFT mark throughout the United States and

the world (but has not set forth any figures or amounts)[1].

In connection with its products and services, Complainant has created a variety

of certification programs to qualify information technology professionals to

perform computer and computer network tasks. It is not clear from Complainant’s

papers when this certification program was first established. As part of the

certification program, individuals who are qualified as Microsoft Certified

Professionals may use the MICROSOFT mark as part of the Microsoft Certified

Professional logo. The guidelines posted by Complainant as of February 14, 2002,

(Complaint, Ex. H) prohibit the use of the MICROSOFT name in any domain name.

Complainant has not indicated when those guidelines first came into existence.

On November 1, 1998, the domain name <microsoftcertified.com> was

registered. It is not clear what use was made of the domain name from 1998 until

1999. In 1999, the domain name directed Internet users to a website that offered

Microsoft networking and consultation and identified the owner of the website,

Glenn Taylor, as a Microsoft Certified Professional. It is not known how long

this website was available at the <microsoftcertified.com> domain

name. In March 2001, Internet users who typed in the <microsoftcertified.com>

URL were taken to a page advising that "you can get your name @ MicrosoftCertified.com

for only $25.00 per year." This use, or similar use, appeared to continue

to at least May 2001. See Complaint, Exs. L and M. At some point in 2001,

the <microsoftcertified.com> URL directed Internet traffic to a website

for Taygee Computers which offered Glenn Taylor’s computers for sale. See

Complaint, Ex. I.

On December 19, 2001, Complainant, by its counsel, sent a demand letter to

Glenn Taylor, then the owner of the <microsoftcertified.com> domain

name, asking for the transfer of the domain name and advising that if the <microsoftcertified.com>

domain name registrant refused to transfer the domain name, Complainant

would file a Complaint under the Policy. Complaint, Ex. O. In response to the

demand letter, Glenn Taylor advised that he was a Microsoft Certified Professional.

He also advised that he would cease using the domain name in connection with

his website selling computers and that he would "turn it into a porn site

as soon as I can." Shortly after advising Complainant of his intention

to route his domain name to a porn website, the registrant apparently changed

his mind and offered to sell the domain name for $100,000 plus a free course

plus an agreement that Complainant would not charge him for any further certification

exams. Complaint, Ex. Q. This was rejected. The domain name registrant separately

contacted an employee of Complainant advising that he would agree to transfer

the domain name to Complainant and asked specifically who he needed to speak

to "to arrange for this transfer and at what price?" In his e-mail,

Mr. Taylor stated that all he has ever sold is Microsoft approved products

from Microsoft approved distributors. Complaint, Ex. R. Mr. Taylor then advised

counsel for Microsoft, by e-mail dated December 28, 2001, that he

would give the name back. Complaint, Ex. S.

There then followed an exchange of several e-mails and letters concerning the

mechanics for transferring the domain name. As of February 13, 2002,

the domain name still had not been transferred. Instead, it appeared that the

domain name registrant had created a link so that Internet users who typed in

<microsoftcertified.com> were taken directly to Complainant’s home

page. Complainant advised the registrant that this was not sufficient and that

transfer of the domain name was required. Mr. Taylor advised Complainant on

February 13, 2002, that because he was a Microsoft Certified Professional

he had the right to display the logo and that he was no longer willing to transfer

the domain name. During the time when the parties were discussing the possibility

of transferring the <microsoftcertified.com> domain name, Mr. Taylor,

on January 8, 2002, registered the domain name <microsoftcertified.info>.

Complainant contacted Mr. Taylor by letter dated April 17, 2002,

advising that both the <microsoftcertified.com> and <microsoftcertified

.info> domain names violated the terms of use of the Microsoft Certified

Professional logo and asked for the transfer of both Domain Names. By e-mail

dated April 17, 2002, Mr. Taylor indicated a willingness to sell

the Domain Names for $100,000 for each name. See Complaint, Ex. FF. Thereafter,

Mr. Taylor advised that he was going to sell the domain names to an overseas

party. Following that e-mail, sent on April 29, 2002, the website

connected to the domain name <microsoftcertified.com> appeared to be changed

and to lead to an "under construction" page provided by the Registrar.

The domain name <microsoftcertified.info> was used to link to a search

engine that contained advertising, including advertising for Taygee Computers

which is Mr. Taylor’s company.

On April 30, 2002, Complainant, through its counsel, forwarded its Complaint

in this matter by e-mail to Glenn Taylor, who acknowledged receipt by sending

a reply e-mail to Complainant on April 30, 2002, at 6:30 p.m. At approximately

8:30 a.m. on May 1, 2002, the registrant information for both <microsoftcertified.com>

and <microsoftcertified.info> was changed and the registrant

was listed as WDW, Inc. Although both Domain Names, as of May 1, 2002,

were listed as being owned by the Respondent named in the Amended Complaint,

on May 7, 2002, six days after the transfer, the original registrant,

Glenn Taylor, contacted the Center asking when he would get an opportunity to

file a reply to the Complaint. Approximately 15 minutes later, WDW, the current

Respondent, sent an e-mail to the Center asking why he could not use the Domain

Names if he was in fact certified by Complainant. Two minutes later, Glenn Taylor

sent an e-mail to the Center in response to the Complaint saying Microsoft could

have the domain names, noting that he expected Complainant to "at least

offer to pay for the hosting . . .." An identical e-mail was received nine

minutes later by the Center from WDW, the Respondent.

After the Amended Complaint was sent to the current Respondent, WDW sent an

e-mail on May 16, 2002, to the Center advising that he was Microsoft

Certified, that he is recognized as being certified by Complainant, that he

has a Microsoft Certified Professional number and is a Microsoft systems builder.

5. Parties’ Contentions

A. Complainant

The Complaint requests that the Panel transfer the domain names <microsoftcertified.com>

and <microsoftcertified.info> to Complainant on the following legal

grounds:

First, Complainant claims ownership of and rights in the mark MICROSOFT.

Second, Complainant alleges that the Domain Names are identical to the MICROSOFT

mark and are confusingly similar to the address for its official website at

<www.microsoft.com>.

Third, Complainant claims that the use of the Domain Names is likely to cause

initial interest confusion or is likely to cause consumers to believe that the

goods and services offered or advertised at websites connected to the Domain

Names are sponsored, endorsed or authorized by Complainant.

Fourth, Complainant alleges that Respondent has no legitimate interest in the

Domain Names and that even if Respondent is a Microsoft Certified Professional,

Respondent has no license or consent, express or implied, to use MICROSOFT in

or as part of a domain name.

Fifth, Complainant claims that Respondent is unfairly using the Domain Names

for his own benefit in order to promote his company’s products over the Internet.

Sixth, Complainant claims that Respondent registered the domain names to trade

on the reputation of and goodwill associated with the MICROSOFT mark as evidenced

by its offer to sell the Domain Names at a profit.

Seventh, Complainant alleges that the Domain Names were registered and used

in bad faith based on the request by Respondent for payment for the Domain Names,

on Respondent’s use of the domain names to direct traffic to his Taygee website

where he sells products, including computer software and based on his threat

to post pornographic content at <www.microsoftcertified.com>.

B. Respondent

Respondent did not file a formal response to the Complaint and, as such, was

declared in default by the Center. However, Respondent did submit numerous e-mails

to the Center, all of which clearly were in response to the Complaint that was

filed and all of which were submitted prior to the due date for filing an answer.

As such, they should not be ignored or disregarded. Creo Products Inc. v.

Website in Development, WIPO Case No.

D2000-1490 (January 19, 2002).

In the various e-mail submissions made by Respondent, Respondent suggests that

because he is a Microsoft Certified Professionals he is entitled to use the

MICROSOFT mark in or as part of a domain name.

6. Discussion and Findings

In order for Complainant to prevail in this matter and to obtain the requested

relief of a transfer of the Domain Names, Complainant must prove:

- That it has rights in the mark MICROSOFT;

- That the Domain Names are identical or confusingly similar to Complainant’s

trademark;

- That the Respondent has no rights or legitimate interests in the Domain Names;

and

- That the Domain Names were registered and are being used in bad faith. See

Policy, Paragraph 4(a).

Procedural Issues – Who Is the Respondent

The bulk of Complainant’s submissions on the issues of lack of legitimate rights

and bad faith are against the original registrant[2],

Glenn Taylor. However, Glenn Taylor is not the Respondent. Thus, the critical

question is whether the transfer of the Domain Names from Glenn Taylor to the

current registrant and named Respondent can be voided and if they cannot be

voided, whether there is any basis for a finding bad faith registration and

bad faith use by the current Respondent based on Mr. Taylor’s activities.

Paragraph 8(a) of the Policy advises the domain name registrant that he "may

not transfer your domain name registration to another holder (i) during a pending

administrative proceeding brought pursuant to paragraph 4 . . .. We reserve

the right to cancel any transfer of a domain name registration to another holder

that is made in violation of this subparagraph." Panelists who have had

the opportunity to consider this provision have interpreted paragraph 8(a) as

applying from the time the complaint is filed not from the formal commencement

of the proceeding under Rule 3(a). As noted in British Broadcasting Corporation

v. Data Art Corporation/Stonybrook, WIPO

Case No. D2000-0683 (September 20, 2000), "[t]o interpret

section 8(a) of the Policy in such a way as to permit transfers of registration

after notice of the complaint to the respondent but before official commencement

of the proceedings by way of notification from the provider would not do justice

to complainants who have initiated complaints in accordance with the Policy

and Rules. Moreover, such an interpretation would appear to permit, if not encourage

the phenomenon cyberflying, where a registrant of a domain name, when named

as the respondent in a domain name dispute case, systematically transfers the

domain name to a different registrant to disrupt the proceeding." In that

case, the panel ignored the transfer. See also, Imperial Chemical Industries,

plc v. Oxford University, WIPO Case No.

D2001-0292 (May 11, 2001) (finding that where complaints were

properly served before a transfer occurred the change in the domain name owner

does not prevent implementation of a decision).

The uncontested evidence here is that after the Complaint was filed electronically

with the Center and was sent to, received by, and acknowledged by Mr. Taylor,

Mr. Taylor transferred the Domain Names. Given this chronology, under Paragraph

8(a) of the Policy, the transfer to the current Respondent can be ignored.

Even if the transfer could not be ignored, it is apparent from the evidence

presented that the current listed owner of the Domain Names is [2].

Specifically, on May 7, 2002, both WDW, Inc. and Glenn Taylor submitted

comments to the Center with respect to the Complaint, thereby showing that Mr. Taylor

had not given up his claim to the Domain Names. Two of those e-mails, one submitted

by Glenn Taylor on May 7, 2002, at 3:49 and one submitted by

WDW, Inc. at 3:58 were identical. In addition, both WDW and Glenn Taylor have

raised in various correspondence and pleadings the right to use the Domain Names

because they are Microsoft Certified Professionals. Finally, WDW had an opportunity

to respond to the Amended Complaint to set forth facts and evidence to indicate

that it was not an alter ego of or otherwise related to Glenn Taylor, WDW did

not provide any such evidence. The failure to reply to this issue of ownership

allows the Panel to draw an inference that the Respondent does not deny the

facts which the Complainant asserts or the conclusions which the Complainant

asserts can be drawn from the facts. See Reuters Limited v. Global Net 2000,

Inc., WIPO Case No. D2000-0441 (July 13, 2000).

Accordingly, the Panel treats WDW as being identical to or affiliated with Glenn Taylor

and determines that the evidence of bad faith relating to Glenn Taylor can be

applied to WDW.

Rights in the Mark

Based on the Panel’s review of the records of the United States Patent and

Trademark Office as well as the determinations made by prior panels ( e.g.,

Microsoft Corporation v. MindKind, WIPO

Case No. D2001-0193 (April 20, 2001); Microsoft Corporation

v. StepWeb, WIPO Case No. D2000-1500

(January 19, 2001)), it is clear that the Complainant is the owner

of rights in the mark MICROSOFT, a finding not contested by Respondent.

Identical or Confusing Similarity

In addressing this aspect of the Policy, Complainant sets forth numerous arguments

about likelihood of confusion, confusion under the Lanham Act, and initial interest

confusion. Those arguments are irrelevant for the purposes of the Policy and

for purposes of determining identical or confusing similarity under the Policy.

Identical or confusing similarity under the Policy is not the same as the issue

of likelihood of confusion under trademark law. Rather, the determination is

made based on a comparison of the marks without reference to other issues. Rolex

Watch U.S.A., Inc. v. Spider Webs Ltd., WIPO

Case No. D2001-0398 (July 2, 2001).

The disputed Domain Names incorporate the whole of the MICROSOFT mark followed

by the term "certified." The addition of the generic word "certified" does not

serve to sufficiently distinguish the Domain Names from the MICROSOFT trademark.

Chanel, Inc. v. Estco Technology Group, WIPO

Case No. D2000-0413 (September 18, 2000). Indeed, given Complainant’s

evidence that it provides a certification program, the addition of this word

may actually increase confusion. Accordingly, Complainant has established this

element.

Legitimate Interests

Under the Policy, legitimate interests in the Domain Names may be demonstrated

by showing that: (i) before any notice of this dispute Respondent used, or demonstrably

prepared to use, the Domain Names, or a name corresponding to the Domain Names,

in connection with a bona fide offering of goods or services; (ii) Respondent

has been commonly known by the Domain Names, even if no trademark or service

mark rights have been acquired; or (iii) Respondent is making legitimate non-commercial

or fair use of the Domain Names, without intent for commercial gain or to misleadingly

divert customers or to tarnish the trademarks at issue. Policy, Paragraph 4(c).

The critical issue here is whether a person who is certified by Microsoft and

who has the right to fairly and accurately describe himself as "Microsoft

Certified" may use that term as a domain name. Complainant’s guidelines

posted in February 2002 prohibit the use of the MICROSOFT mark in or as part

of a domain name. Conduct that violates the terms of an agreement or contract

cannot create legitimate rights in a domain name. Heel Quik!, Inc. v. Michael

H. Goldman, NAF 92527. While Respondent, if it is truly a Microsoft Certified

Professional, does have a right to fairly and accurately describe himself using

those terms, this right does not necessarily extend to allowing the Respondent

to create a domain name using the MICROSOFT mark. See Deloitte Touche Tohmatsu

v. Robert Thorp, WIPO Case No. D2001-1431

(January 31, 2002).

Respondent also cannot show that it has been commonly known by the Domain Names.

As to Respondent’s use of the domain name prior to receipt of notice of the

dispute, there is no question that before Respondent registered <microsoftcertified.info>

it was on notice of Complainant’s position in this case. Thus, no legitimate

rights can be established with respect to <microsoftcertified.info>. As

to the domain name <microsoftcertified.com>, clearly this was being

used by the Respondent before receiving any demand letter or other complaint

by Complainant. However, the fact that there was use prior to notification of

the dispute does not make the use legitimate or acceptable. It is assumed (primarily

because the Respondent has not contested it) that at the time this domain name

was registered the Respondent was aware of Complainant’s guidelines prohibiting

use of the term MICROSOFT as part of a domain name. Moreover, even if there

is use prior to being notified of the dispute, if that use is infringing, it

cannot be deemed legitimate. Madonna Ciccone p/k/a Madonna v. Dan Parisi

and "Madonna.com", WIPO Case

No. D2000-0847 (October 12, 2000). Here, the use that had been

made of the <microsoftcertified.com> domain name prior to receiving a

demand letter from Complainant was likely to cause confusion in that it suggested

that there was an official relationship between the website and Complainant

when none existed. Accordingly, Complainant has satisfied its requirements of

Paragraph 4(a)(ii) of the Policy.

Bad Faith Registration and Use

The final element that Complainant must prove is that the Domain Names have

been registered and are being used in bad faith. Paragraph 4(b) of the Policy

sets forth various types of evidence showing registration and use in bad faith

although the circumstances set forth therein are not the only circumstances

showing bad faith use and registration. See e.g., 3636275 Canada, dba eResolution

v. eResolution.com, WIPO Case No. D2000-0110

(April 10, 2000).

Paragraph 4(b)(i) of the Policy refers to circumstances indicating that the

Respondent registered the Domain Names primarily for the purpose of transferring

them to the owner of the mark for valuable consideration in excess of documented

out-of-pocket costs. In this case, Respondent sought to sell the names to Complainant

who is the owner of them and asked for compensation far in excess of any documented

out-of-pocket costs. This alone is sufficient to establish bad faith use. As

to bad faith registration, <microsoftcertified.info> was registered

well after Complainant had objected to the registration of <microsoftcertified.com>

and was clearly registered with knowledge of Complainant’s objection. Furthermore,

Complainant alleges, and Respondent does not contest the fact, that at the time

the Domain Names were registered, Respondent was on notice of Complainant’s

policy forbidding the use of the MICROSOFT mark in or as part of a domain name

even if Respondent was a Microsoft Certified Professional. These facts lead

to a finding of bad faith registration of the Domain Names.

7. Decision

Complainant has proved the necessary elements of the Policy to obtain the relief

requested. Specifically, Complainant has shown rights in the MICROSOFT trademark,

has shown that the Domain Names are identical or confusingly similar to the

trademark in which Complainant has rights, that Respondents have no rights or

legitimate interest in the Domain Names, and that Respondents registered the

Domain Names in bad faith and are using them in bad faith. Therefore, Complainant’s

request for transfer of the Domain Names <microsoftcertified.com> and

<microsoftcertified.info> is hereby granted.

Barbara A. Solomon, Esq.

Sole Panelist

Dated: July 1, 2002

1. In the future, Complainant would be

advised to provide to the Panel evidence to support the allegations of rights

which would include but is not limited to actual copies of trademark registrations

or printouts from the USPTO database showing registrations in the name of Complainant,

articles listing Complainant as one of the best-known companies in the world,

and cases which have held the MICROSOFT name protectable. Complainant does have

the burden of proof and must discharge that burden with actual evidence.

2. Complainant suggests that because the

WHOIS records did not state that the names were transferred no transfer of the

names occurred. There is no merit to this argument as WHOIS records generally

never identify that a transfer occurred but merely show when records have been

updated for any purpose.

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