Microsoft v. Azra Khan

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft v. Azra Khan

Case No. D2003-0481

1. The Parties

The Complainant is Microsoft, of Redmond, Washington, United States of America, represented by Arnold & Porter of United States of America.

The Respondent is Azra Khan, of Rawalpindi, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <msnindia.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 21, 2003. On June 23, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for Registrar Verification in connection with the domain name at issue. On June 23, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its Verification Response confirming that Respondent is listed as the Registrant and providing the contact details for the Registrant. No specific information was given concerning Administrative, Billing, and Technical contacts. The contact details given included only the name of Respondent, and its mailing and e-mail addresses but no indication about telephone or fax numbers. The Registrar furthermore confirmed that the Uniform Domain Name Dispute Resolution Policy applies to the registration.

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 June 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s Default on July 15, 2003.

The Center appointed Mr. Henry Olsson as the Sole Panelist in this matter on July 31, 2003. The Projected Decision Date was August 14, 2003.

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

Microsoft Corporation is a corporation with its principal place of business in Redmond, Washington. The Corporation is a well-known provider of computer software and related products and services, including products for use on the Internet. The products and services include the development of Internet software and online services and information delivered via Internet. Microsoft has since its inception in 1975, created software and Internet services for use in homes, in education and in the workplace. The products and services include computer operating systems, client/server applications, business and consumer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, computer input devices, on-line information and entertainment services, and computer publications.

Nothing is known about the activities of the Respondent (besides what is included in the Complaint and in some earlier cases dealing with those activities).

In connection with its Internet services, Microsoft owns a number of trademarks, among those the trademark "MSN" for which Microsoft has obtained trademark registrations in numerous countries in several classes of goods and services related to Internet activities. Thus, the United States Patent and Trademark Office has granted several registrations for the "MSN" mark, alone or in combination with design, and Microsoft has, in addition, obtained trademark registrations in more than 50 countries, however not in Pakistan as that country does not grant trademark status to service marks.

The Internet services of Microsoft include an on-line portal at "www.msn.com" which offers consumers several online services, including "MSN 8 Internet Services", "MSN Top Headlines" and "MSN Shopping".

In accordance with Rule 3(b)(xiii) of the Rules, the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts in Florida which is the location of the principal place of business of the Registrar.

5. Parties’ Contentions

A. Complainant

General

First, the Complainant states, in general terms, that Microsoft has invested

significant time, effort and money in advertising and promoting the "MSN"

mark throughout the United States and the world. In using the mark, Microsoft

offers localized versions of its services under the mark in 18 languages in

more than 30 countries worldwide. The Complainant submits that, as a result,

"MSN" has become one of the most popular Internet destinations and

an enormous amount of goodwill is attached to that mark. To support this, the

Complainant has submitted copies of two press releases and has also referred

to an earlier WIPO case where the Panel recognized an "undoubted worldwide

fame" of the "MSN" mark (Microsoft Corp. v. Momm Amed Ia.,

WIPO Case No. D2001-1454).

The Complainant furthermore states that the "MSN" websites include different home pages for different countries in which Microsoft puts on the market its products and services. The main "MSN" home page includes a category entitled "MSN Worldwide" and a list of countries. For instance, a customer who selects "India" is taken to the "MSN" India Home Page that contains information concerning the products and services tailored for the Indian market.

As regards the domain name at issue, the Complainant states that it recently discovered that the Respondent had registered the <msnindia.com> domain name and was using it in connection with a commercial website. When entering that domain name into his or her Internet browser, the user is redirected to a website located at "www.ownbox.com" which contains a search engine query box and displays the title "Search for the Hottest Topics on the Web". The website at issue also contains hyperlinks to several categories of commercial websites, such as "Gambling", "Computers" and others. There is also a box entitled "Hot Topics" which lists several categories of websites including one for "Sex." The Complainant alleges that once a user enters the website at issue, he or she is "mousetrapped" within the site, as commercial websites appear subsequently, which makes it difficult to exit from the website. The Complainant has submitted copies of printouts to support its allegations in this respect.

The Complainant adds that the Respondent is obviously engaged in a practice of registering domain names comprised of the well-known trademarks of other companies and typographical errors of well-known trademarks of other companies. The Complainant alleges that the conduct of the Respondent constitutes a scheme intended to capitalize on the goodwill associated with the trademarks of others for its own illegitimate purposes, which is to re-direct Internet traffic to commercial websites owned by or affiliated with the Respondent, or from which the Respondent receives monetary compensation as a result of the Internet traffic brought to such websites by the illegal activities of Respondent. To support its contentions in this respect, the Complainant has referred to, inter alia, seven UDRP proceedings in which trademark holders have obtained transfer or cancellation of domain names registered and used in bad faith by the Respondent.

When the Complainant had detected the registration and use of the domain name at issue by the Respondent, the attorney of the Complainant sent, on May 16, 2003, a letter to the Respondent via overnight mail and electronic mail notifying the Respondent that the domain name at issue infringed the rights of the Complainant and requesting that the domain name be transferred to the Complainant. The Complainant has submitted a copy of that letter.

Identity or Confusing Similarity

In this respect, the Complainant first submits that courts have recognized

that consumers generally expect to find a company on the Internet at a domain

name address comprised of the name or mark of the company. In the case at issue,

the domain name is, according to the Complainant, confusingly similar both to

the "MSN" mark and the website addresses for "MSN" websites;

the only difference being that the domain name also adds the geographical description

"India". The Complainant alleges that this is a minor addition that

does not avoid a finding that the domain name is confusingly similar to the

mark. The Complainant refers in this context to the earlier Microsoft Corp.

v. Webbangladesh.com, WIPO Case No. D2002-0769

where the panel found that the domain name <microsoftbangladesh.com> was

identical to the mark of complainant in that case differing only in the addition

of the geographical description "Bangladesh." Thus, according to the

panel, "the domain name bears an exceptional and confusing similarity to

the Microsoft mark". The Complainant also refers to the America Online,

Inc., v. Yeteck Communication, Inc., WIPO

Case No. D2001-0055 where it was found that the domain name <aolcasino.com>

was confusingly similar to the AOL mark.

The Complainant stresses that Microsoft uses its "MSN" mark with

other generic names in domain names for websites offering specific services,

such as <search.msn.com>, <eshop.msn.com>, <chat.msn.com>

and <my.msn.com>. The Complainant refers in that context to the eBay

Inc. v. SGR Enterprises and Joyce Ayers, WIPO

Case No. D2001-0259 (there the panel found that "the fact that eBay

routinely employs its EBAY mark with other words in domain names increases the

likelihood for confusion".

The Complainant therefore submits that the domain name at issue is confusingly similar to the "MSN" mark.

The Complainant finally alleges that the confusing similarity between the domain name at issue and the trademark of the Complainant makes it highly likely that consumers who visit the website under the domain name at issue will mistakenly believe that the website is endorsed or sponsored by, or originates or is associated with Microsoft. Internet users seeking to locate a localized Indian version of a Microsoft website will attempt to find it under <msnindia.com> and then are diverted to the commercial site of the Respondent. Such a behavior on the part of the Respondent is illegal because the infringer has wrongfully capitalized on the goodwill of a trademark owner to divert the Internet traffic.

Rights or Legitimate Interests

The Complainant alleges, first, that the Respondent has no connection with or affiliation with Microsoft and has received no license or consent, express or implied, to use the "MSN" mark in a domain name or in any other manner.

In addition, the Complainant is informed and believes that the Respondent has never been known by the names "MSN", "msnindia" or the domain name that incorporates the foregoing. The Complainant is unaware of any legitimate rights that Respondent could have in the domain name <msnindia.com>.

Registration and Use in Bad Faith

As regards first registration in bad faith, the Complainant alleges, in summary,

the following. With reference to the earlier domain name cases involving the

Respondent, the Complainant alleges that the Respondent has a well-documented

practice of registering domain names comprised of well-known trademarks of other

companies. In an earlier Doctor.Ing.h.c. F.Porsche AG v. Stonybrook Investments

Ltd., WIPO Case No. D2001-1095 it

was found that a pattern of registering variations of well-known trademarks

is "probative in showing bad faith on the part of the Respondent".

Furthermore, the Complainant alleges that the "MSN" mark and the services provided by Microsoft under that mark are well known throughout the world and it is inconceivable that the Respondent was not aware of the "MSN" mark at the time of the registration of the domain name at issue. Also, according to the Complainant, the Respondent is deemed to have constructive notice of the trademark rights of Microsoft in the mark "MSN" by virtue of the federal trademark registrations for that mark.

Finally, according to the Complainant, the failure of the Respondent to provide

complete contact information for the domain name at issue is indicative of bad

faith; no telephone number of facsimile number has been provided for the Registrant

or for the Administrative or Technical Contacts. In Ticketmaster Corp. v.

Dmitri Prem, WIPO Case No. D2000-1550,

it was found that absence of complete or correct information in the application

for registration suggests a desire to create a covert position and make communication

difficult and constitutes bad faith.

As regards then use of the domain name in bad faith, the basic allegation of the Complainant is that the actions of the Respondent fall within Paragraph 4(b)(iv) of the Policy because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the mark of Microsoft as to the source, sponsorship, affiliation, or endorsement of its website or location of a product or service on its website.

To support this allegation and with reference to findings in some earlier WIPO cases, the Complainant alleges that the Respondent has engaged in bad faith by the practice of registering the famous trademark of Microsoft to divert traffic to the website belonging to Respondent itself. In addition, the Respondent has used the <msnindia.com> domain name in bad faith in an attempt to divert Internet traffic away from Microsoft to a commercial website at "www.ownbox.com" which has undoubtedly been done in order to benefit from the enormous level of Internet traffic from users looking for the official "MSN" website. With reference to a number of earlier cases, the Complainant alleges that such a behavior constitutes use in bad faith.

According to the Complainant, additional evidence of bad faith is the use of the domain name at issue to point to a website comprised of hyperlinks to third party websites which offer various commercial products and services for sale. Such uses constitute commercial use of the mark of Microsoft and use in bad faith. Also in this respect, Complainant makes reference to a number of earlier cases.

Furthermore, according to the Complainant, even if the Respondent were not currently using the domain name at issue for hosting an active webpage, the actions by the Respondent would still constitute registration and use in bad faith; the Respondent must have expected that any use of the domain name at issue would cause harm to Microsoft because the domain name is composed of a mark that is obviously indicative of the products and services of Microsoft and that the use by the Respondent would inevitably lead to some form of confusion.

Remedies Requested

In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described, the Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is thus in Default.

6. Discussion and Findings

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

In the case of Default by a Party, paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case, no Response has been submitted and none of the contentions by the Complainant has been contested, despite the opportunity given to do so. The Panel will therefore have to operate on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.

The Panel notes that the Notification of Complaint and Commencement of Administrative Proceeding was transmitted to the PO Box address of Respondent by ordinary mail and by e-mail to addresses provided in the Registrar verification. The Panel finds that all reasonable efforts have been undertaken to communicate the Complaint to the Respondent and considers that the Respondent has been duly notified of the proceeding so that there is from this point of view no obstacle to considering the case.

From the Verification Response follows that the Policy applies to the domain name at issue. The Respondent is consequently obliged to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain name.

Paragraph 4(a) of the Policy directs that the Complainant has to prove each of the following:

a. that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights

b. that Respondent has no rights or legitimate interests in the domain names, and

c. that the domain name has been registered and is being used in bad faith.

In the following parts of this Decision, the Panel discusses each of those

elements.

A. Identical or Confusingly Similar

In this respect, the Complainant has, according to Paragraph 4(a)(i) of the

Policy, to prove that the domain name at issue is identical with, or confusingly

similar to, a trademark or a service mark in which the Complainant has rights.

The domain name at issue is this case is <msnindia.com>.

From the submission by the Complainant, supported by documentary evidence,

follows that the Complainant has registered trademark rights in the trademark

"MSN" alone or with design, both in the United States and in more

than 50 other countries. The evidence submitted, as well as the finding by an

earlier Panel in Microsoft Corp.v. Momm Amed Ia, WIPO

Case No. D2001-1454, suggests that in fact the trademark "MSN"

has a world-wide fame. This Panel concurs in this respect. Taking into account

this fact and the world-wide access of the Internet it is, from the point of

view of establishing identity or confusing similarity in this case, of no relevance

whether the mark is in fact registered in the country, namely Pakistan, where

the Respondent is located.

The only difference between the mark and the domain name at issue is the addition

of "india" and the notion ".com". This Panel agrees with

the Complainant and with findings in some earlier cases to which reference it

made, to the effect that additions such as these do not such as to remove the

likelihood of confusion.

On the basis of these considerations, the Panel finds it to be established

that there exists a confusing similarity between the trademark in which the

Complainant has rights and the domain name at issue.

B. Rights or Legitimate Interests

In this respect, the Complainant has, according to Paragraph 4(a)(ii) of the

Policy to prove that the Respondent has no rights or legitimate interests in

the domain name at issue.

The Complainant has alleged that the Respondent has no connection or affiliation

with Microsoft and has not received any license or consent, express or implied,

to use the trademark of Complainant in a domain name or any other manner. Also,

the Complainant alleges that the Respondent has never been known by the name

"MSN", "msnindia" or by the domain name incorporating those.

The Respondent has not contested those allegations and the Panel thus considers

those to be established and as constituting evidence of absence of rights or

legitimate interests in the domain name on the part of the Respondent.

C. Registered and Used in Bad Faith

In this respect, the Complainant has, according to Paragraph 4(a)(iii) of the

Policy, to prove that the domain name has been registered and is being used

in bad faith. Paragraph 4(b) of the Policy sets out some circumstances which,

in particular but without limitation, shall, if found to be present, be considered

as evidence of registration and use in bad faith.

As a general observation, this Panel considers it be inconceivable that the

Respondent was not aware of the "MSN" mark and its fame at the time

of the registration of the domain name at issue. Furthermore, the Panel considers

that the previous cases relating to domain name disputes involving the Respondent

show that the Respondent is in fact engaging in a pattern of registering domain

names comprising trademarks of other companies. This fact, as well as the absence

of complete contact information in connection with the domain name registration,

leads the Panel to the conclusion that the domain name at issue was in fact

registered in bad faith.

As regards then use in bad faith, the Panel first observes that the Respondent

has not contested the allegations by the Complainant about the use of the domain

name website to divert users to the website of the Respondent and then to other

commercial websites. Those allegations are well supported by the documentary

evidence submitted by the Complainant and by the precedence cited by the Complainant.

The Panel considers the facts included in the allegations the Complainant as

established and finds that those constitute an intentional attempt by the Respondent

to attract, for commercial gain, Internet users to its website by creating a

likelihood of confusion with the trademark of Microsoft as to the source, sponsorship,

affiliation, or endorsement of its website or location of a product or service

on its website. These circumstances constitute bad faith under Paragraph 4(b)(iv)

of the Policy.

D. Conclusions

On the basis of these considerations, the Panel considers it to be established

that the domain name at issue is confusingly similar to the trademark in which

the Complainant has rights, that the Respondent has no rights or legitimate

interests in the domain name and that the domain name has been registered and

is being used in bad faith. The Request by the Complainant for a transfer of

the domain name shall consequently be approved.

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 <msnindia.com>

be transferred to the Complainant.

Henry Olsson

Sole Panelist

Dated: August 4, 2003

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