The Complainant is Microsoft Corporation, Redmond, Washington, United States
of America, represented by Baker & McKenzie, Hong Kong, SAR of China.
The Respondent is coco lee, City quanzhou, China.
2. The Domain Name and Registrar
The disputed domain name <windows-mail.com> is registered with Direct
Information Pvt Ltd. dba Directi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2004. On November 25, 2004, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On November 27, 2004, Direct Information Pvt Ltd. dba Directi.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 December 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2004.
The Center appointed Fleur Hinton as the sole panelist
in this matter on January 12, 2005. 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 is an international corporation known throughout the world for its computer software and for products which can be used with that software including products which interact with the Internet.
The Complainant has used its trademark WINDOWS extensively and has registered it as a trademark in many countries throughout the world. The Complainant uses its trademark WINDOWS both on its own and in combination with other material of both trademark and non trademark nature, such as WINDOWS XP, WINDOWS CE, WINDOWS SECURITY CENTER AND WINDOWS MAIL. Exhibits 4 and 5 to the Complainant’s Complaint list the Complainant’s WINDOWS trademarks in the United States and the People’s Republic of China, the latter with English transliterations and translations where necessary.
The Respondent registered the domain name <windows-mail.com> (the “Disputed Domain Name”) on July 26, 2004, and the Complainant became aware of this registration in August 2004. The website to which the Disputed Domain Name leads (the “Website”) has at the top a four (4) panelled rectangular logo in the same colours as the well-known WINDOWS logo: red, blue, green and yellow next to the words “WINDOWS-MAIL”. The Respondent offers advertising services through the Website.
After having become aware of the Website, the Complainant
employed an inquiry agent to obtain information about the owner of the Website.
The results of the inquiry are included in the complaint and a copy of a written
credit report is an exhibit to the complaint. It is apparent that the name and
address of the Respondent appearing on the registration form for the Disputed
Domain Name are false. The actual owner of the Website stated that people often
ask if the Website is connected with the Complainant.
5. Parties’ Contentions
A. Complainant
The primary contention of the Complainant is that the Disputed Domain Name is either identical with, or confusingly similar to the Complainant’s WINDOWS trademark. The mere addition of the generic word “mail” to the Disputed Domain Name does not suffice to overcome the objection on this basis.
The Complainant contends that the Respondent does not have any right or legitimate interest in the Disputed Domain Name. It has no connection or affiliation with the Complainant and has not received any licence to enable it to use the Disputed Domain Name.
There is nothing to suggest that the Respondent has ever been known by the name “Windows Mail”.
The fact that the Respondent is offering services under the Disputed Domain Name is not bona fide use when those services may be offered on behalf of the Complainant’s competitors and where the Respondent is relying upon the use of a domain name which is identical with or confusingly similar to another trader’s trademark.
Finally, the Complainant contends, where the trademark which has been appropriated for the Disputed Domain Name is a famous trademark, it is not one which the Respondent would choose unless it had the intention of inferring a connection with the owner of that trademark, in this case, the Complainant. The result of such an inference would be that consumers will be persuaded to visit the Website. This is evidence of use in bad faith.
In addition, the Complainant has included as exhibit 9 to the Complaint a copy of the uwhois.com entry for the domain name <intel-mail.com> which lists the owner as the same owner as the Respondent. The Complainant contends that this is further evidence of the Respondent’s bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar with the Complainant’s trademark WINDOWS. The Panel further finds that this trademark has so extensive a common law reputation that it qualifies as a famous mark. It is also the subject of trademark registrations in many countries around the world including the United States of America, the Complainant’s home country and the People’s Republic of China, the Respondent’s home country.
As a result of the fame of Complainant’s mark, the domain name, consisting of Complainant’s mark and a generic term associated with a service provided by the Complainant is obviously confusingly similar.
B. Rights or Legitimate Interests
There is absolutely no information available which would enable the Panel to find that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Respondent is using a famous trademark as its domain name in order to run a commercial undertaking. Although the business which it seems to be running is not itself identical with the Complainant’s business, it is certainly possible that the Respondent may accept advertising from people who are in direct competition with the Complainant.
In addition to that consideration is the fact that the fame of the Complainant’s trademark is being used, and probably successfully used, to attract consumers who may well assume a connection with the Complainant and therefore assume that the business being conducted through the Disputed Domain Name is a substantial one with international backing. This is not a bona fide offering.
Under these circumstances, and in the absence of any evidence from the Respondent, the Panel finds that the Respondent has no rights or legitimate interest in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Respondent is also the registered owner of the domain name <intel-mail.com> which is indicative of a practice of adopting well-known trademarks as its domain names. This practice has been held on many occasions to be conduct in bad faith.
The Respondent is resident in the People’s Republic of China where there is legislation making the registration as a domain name and the use of a domain name being another’s registered trademark an infringement of that trademark, and therefore conduct in bad faith.
Finally, the adoption of a famous trademark, such as WINDOWS and its use as a domain name so as to induce consumers to visit a website for commerce is an act of bad faith under paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Respondent has
registered and is using the Disputed Domain Name in bad faith.
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<windows-mail.com> be transferred to the Complainant.
Fleur Hinton
Sole Panelist
Dated: January 26, 2005
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