WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Tongxiwang

Case No. D2011-0994

1. The Parties

The Complainant is Microsoft Corporation of Redmond, Washington, United States of America, represented by Covington & Burling, United States of America.

The Respondent is Tongxiwang of Heilongjiang, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <onlinemicrosoft.com> is registered with Guangzhou Ming Yang Information Technology Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2011. On June 14, 2011, the Center transmitted by email to Guangzhou Ming Yang Information Technology Co., Ltd. a request for registrar verification in connection with the disputed domain name. On June 15, 2011, Guangzhou Ming Yang Information Technology Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 15, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 17, 2011, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 in both Chinese and English, and the proceedings commenced on June 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2011.

The Center appointed Douglas Clark as the sole panelist in this matter on July 21, 2011. 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.

Language of the Proceeding

The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Complainant requested the language of the proceeding be in English on the grounds that the Respondent would not suffer prejudice if the proceeding is conducted in English because 1) the disputed domain name is in English; 2) the website associated with the <onlinemicrosoft.com> disputed domain name contains only English-language text; 3) the Respondent is listed as the WhoIs registrant for numerous domain names that host websites displaying only English text including, <ipadstar.com>, <iphonepack.com>, and <toyotao.com>. The Complainant argues that these facts show the Respondent’s ability to communicate in English and weigh in favor of allowing the proceeding to be conducted in English and cites SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400 (“The Panel is prepared to infer that the Respondent is able to understand and communicate in English based on the substantial content of its website in English. The Panel also notes that the disputed domain name is also in English.”); Fissler GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002 (“it is also self-evident from the Respondent’s website for the disputed domain name displaying a message to offer the domain name for sale that the Respondent can communicate in English without apparent difficulties”).

The Complainant argues that the Complainant’s authorized representative does not communicate in Chinese. As a result, the proceeding will be unduly delayed, and the Complainant would have to incur additional expenses for translation, if all documents were to be filed in Chinese and cites Burger King Corporation v. Burger King S.R.L., WIPO Case No. DRO2008-0012 (“The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs.”); SWX Swiss Exchange v. SWX Financial LTD, supra (“account should be taken of the risk that a strict and unbending application of paragraph 11 may result in delay, and considerable and unnecessary expenses of translating documents”).

The Respondent has not responded to the proceeding nor to the request that the language of the proceeding to be in English.

In the circumstances of this case, the Panel determines that English shall be the language of the proceeding, the Panel notes however that the reasons given by the Complainant are not sufficient reasons to deprive the Respondent of the right to respond in Chinese had he/she so wished to. English words are commonly used to register domain names. This does not mean the registrant is fluent in English. The website under the disputed domain name is a parking page. In this Panel’s view, the fact that a parking page is in English does not necessarily show a respondent is fluent in that language in this case. The fact the Complainant’s representative does not understand Chinese is also not of great relevance. The Complainant has a large presence in China and could, if necessary, have chosen a representative who was conversant in Chinese.

On the other hand, given the Respondent has not responded to the case on its merits or in relation to the language of the proceeding, it would be unfair on the Complainant to request them to translate the Complaint into Chinese. As the only documents before the Panel are in English, the decision will be issued in English.

4. Factual Background

Since 1975, the Complainant has manufactured, marketed and sold computer software and related products and services, including computer operating systems, client/server applications, business and consumer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, online information and entertainment services, electronic commerce services, and computer publications.

The Complainant is the owner of numerous trademarks for these goods and services, including the trademark, MICROSOFT. The 2010 Interbrand survey ranks the MICROSOFT trademark as the third most valuable brand in the world. The MICROSOFT trademark is, and has been found by UDRP panels to be, an internationally famous and distinctive mark, long before the Respondent registered the disputed domain name. Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 (finding that the Complainant’s MICROSOFT mark is “well known throughout the world”). See also Microsoft Corporation. v. Cedric Thompson, WIPO Case No. D2004-1097 (noting that several previous panels have concluded that the Complainant’s MICROSOFT trademark is internationally famous and “readily” subscribing to these findings) (citations omitted); Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (noting that the “uncontested evidence indicates plainly that MICROSOFT is a famous mark, and indeed, several previous WIPO panels have recognized it as such”) (citations omitted).

The Complainant owns more than 25 United States registrations for the trademark MICROSOFT, six Chinese registrations, and more than 600 trademark and service mark applications and registrations for the mark throughout the world. The trademarks MICROSOFT first registered in the United States in 1982 and in China in 1992. In addition, the Complainant also owns many domain names that consist of or contain the MICROSOFT mark, including <microsoft.com>. The Complainant’s primary website is associated with the <microsoft.com> domain name.

The website associated with the disputed domain name prominently displays the MICROSOFT mark and contains pay-per-click links to advertisements for a wide-range of the Complainant’s software products. These pay-per-click links also incorporated the MICROSOFT mark, as well as other the Complainant’s trademarks, including MICROSOFT OFFICE and EXCEL. Furthermore, the associated website displays a link, accompanied by the image of a shopping cart, encouraging visitors to “Buy this domain”. Clicking on this link directed Internet users to a website offering domain name brokerage services whereby customers can “negotiate a sale” for the <onelinemicrosoft.com> disputed domain name.

5. Parties’ Contentions

A. Complainant

Confusingly similar

The Complainant argues the disputed domain name <onlinemicrosoft.com> is substantially and confusingly similar to the Complainant’s MICROSOFT mark. The disputed domain name includes the entire MICROSOFT Mark, with the addition of the non-distinctive, merely descriptive term “online”.

It is well established that a domain name is confusingly similar to a mark where the domain name includes the entire mark, as well as a merely descriptive term. See Microsoft Corporation v. Mr. Leonardo Sciascia, WIPO Case No. D2008-1081(finding the addition of descriptive term to the Complainant’s mark does not alleviate confusion); Lockheed Martin Corporation v. Deborah Teramani, WIPO Case No. D2004-0836 (registering domain names that include a famous mark in combination with other terms “would undoubtedly cause Internet users intending to access Complainant’s website, but who reach a website through any of the disputed domain names, to think that an affiliation of some sort exists between the Complainant and the Respondent, when, in fact, no such relationship would exist at all”).

Furthermore, confusion is particularly great where, as here, the added term describes a central aspect of the Complainant’s business. See Microsoft Corporation v. Wayne Lybrand, supra (“The addition of such relevant descriptive words reinforces rather than detracts from the conclusion that the Domain Name confusingly refers to the business of Complainant and would likely cause at least some customers to assume that the Domain Name is associated with Complainant.”). Here, adding the merely descriptive term “online” likely heightens consumer confusion because the Complainant is well-known throughout the world for its computer- and Internet-related products and services.

No Rights or Legitimate Interests

The Complainant argues the Respondent has neither a legitimate interest in the disputed domain name nor any right to use the disputed domain name.

First, because the Complainant has established its rights to the MICROSOFT mark and has not licensed or authorized the Respondent to use its MICROSOFT mark as part of the disputed domain name, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. Second, there is no evidence that the Respondent is commonly known by the disputed domain name. See paragraph 4(c)(ii) of the Policy. The Respondent owns no rights in, and has no registrations for, the MICROSOFT mark, and it has not been authorized to use the marks. Third, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See paragraphs 4(c)(i), (iii) of the Policy. The Respondent assuredly was aware of the Complainant and its trademarks when it registered the confusingly similar disputed domain name and used it to divert Internet users to the Respondent’s website citing The Laurel Pub Company Limited v. Peter Robertson / Turfdata, WIPO Case No. DTV2004-0007 (finding the Respondent’s use “cannot be said to be bona fide in the sense that the name cannot have been chosen and used in such circumstances without any knowledge of the Complainant’s rights.”). Moreover, the Respondent is making a commercial use of the disputed domain name by hosting pay-per-click links to computer software products on the website associated with the disputed domain name. See Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615 (finding no “interest in the Domain Name other than to use it for commercial gain” where Registrants used the domain name to host pay-per-click advertisements for the Complainant’s competitors).

Registered and Used in Bad Faith

The Complainant argues that the Respondent registered and used the disputed domain name in bad faith. See paragraphs 4(a)(iii), 4(b) of the Policy.

First, the Respondent’s use of the MICROSOFT mark on the website associated with the disputed domain name, as well as within the pay-per-click links to numerous the Complainant’s software products, demonstrates actual knowledge of the famous MICROSOFT mark. Even if the Respondent had not repeatedly used the MICROSOFT mark on the website associated with the disputed domain name, the worldwide fame of the MICROSOFT mark can be deemed to provide constructive notice. The Respondent’s decision to proceed with registration and use, notwithstanding his/her actual knowledge of the MICROSOFT mark’s fame, is evidence of the Respondent’s bad faith.

Second, the Respondent’s offer to sell the disputed domain name on the associated website is further evidence of bad faith under paragraph 4(b)(i) of the Policy citing United Feature Syndicate, Inc. v. All Business Matters, Inc.(aka All Business Matters.com) and Dave Evans,WIPO Case No. D2000-1199 (“offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy”).

Third, the Respondent registered a domain name that is confusingly similar to the MICROSOFT mark to attract Internet users to a website providing pay-per-click links in violation of paragraph 4(b)(iv) of the Policy. Use of the MICROSOFT mark in the disputed domain name, as well as in the pay-per-click links on the associated website, creates a likelihood of confusion for Internet users as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s use of the disputed domain name incorporating the MICROSOFT mark, without any legitimate interest in the name and for purposes of pecuniary gain, demonstrates a bad faith intent to capitalize on the MICROSOFT mark under paragraph 4(b)(iv) of the Policy.

Fourth, the Respondent has engaged in a pattern of registering infringing domain names citing paragraph 4(b)(ii) of the Policy. The Respondent, who is listed as the registrant for approximately 175 domain names, has registered multiple domain names which are confusingly similar to other famous trademarks, such as TOYOTA, IPHONE, and IPAD. In addition, the websites associated with each of these domain names also host pay-per-click links to advertisements for goods or services related to the mark owner’s business. The Respondent’s pattern of conduct demonstrates bad faith citing Société BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342 (The Respondent acted in bad faith when exhibiting “a pattern of registering and using domain names incorporating third parties trademarks” with intent to profit from consumer confusion).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The facts of this case are very clear and overwhelmingly in favour of the Complainant. The Panel agrees with the submissions of the Complainant but does not need to consider them all in detail. The following findings are sufficient to find in favour of the Complainant.

A. Identical or Confusingly Similar

The disputed domain name <onlinemicrosft.com> is clearly confusingly similar to the Complainant’s well-known trademark registration for MICROSOFT as well as to its domain name <microsoft.com>. The addition of the word “online” as a descriptive term related to the Complainant’s business, arguably adds to possible confusion.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to provide any evidence as to any rights or legitimate interests he/she may have. In the circumstances, the Panel accepts that the Complainant’s submissions that the Respondent has no rights or legitimate interests in the disputed domain name. The similarity of the disputed domain name and the use as a parking page to generate revenue all point to the Respondent, even if he/she had responded, being able to convince the Panel that he/she had rights or legitimate interests.

C. Registered and Used in Bad Faith

The similarity of the disputed domain name with the Complainant’s trademark, the offer to sell the disputed domain name and the use being made of the disputed domain name as a parking page can only lead to the conclusion that the disputed domain name has been registered as is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <onlinemicrosoft.com>, be transferred to the Complainant.

Douglas Clark
Sole Panelist
Dated: July 22, 2011