Microsoft does not have monopoly on generic word 'windows'

International

In Microsoft Corporation v Goldman, a three-member World Intellectual Property Organization (WIPO) panel has refused to order the transfer of 'WindowsCasino.com' to the complainant. Although the panel found that the domain name is confusingly similar to Microsoft's WINDOWS trademark, there was no evidence to show that the respondent has no rights or legitimate interests in the name, particularly since 'windows' is a generic word.

Last year, as part of its ongoing trademark enforcement programme, Microsoft discovered that Avi Goldman of the Dominican Republic had registered and was using the disputed domain name in connection with a commercial website to promote software for consumers and online casino operators called 'Windows Casino'. Microsoft filed a complaint with the WIPO Arbitration and Mediation Centre, requesting transfer of the domain name.

The panel denied Microsoft's request on the basis that it had failed to prove all three necessary elements under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy. Although the panel recognized that consumers identify the generic word 'windows' with Microsoft and therefore Goldman's domain name is confusingly similar to Microsoft's WINDOWS mark, the panel concluded that the company had failed to prove that Goldman (i) lacks legitimate interests in 'WindowsCasino.com', and (ii) had registered and used the domain name in bad faith. Somewhat critical of Microsoft's submission on the first point, the panel held that:

"[t]o establish that the respondent in this case does not have legitimate interests in the subject domain name, the complainant would have to do more than merely point to its mark and to the lack of permission to use the word 'windows' as part of the subject domain name."

With regard to the issue of bad faith, the panel stressed that the registration of a domain name incorporating a generic word is not prima facie bad faith, even if that generic word is part of a registered trademark owned by a powerful entity such as Microsoft. The panel also found that Goldman made legitimate use of the domain name, neither attempting to sell it or use it to offer goods or services in competition with those offered by Microsoft.

Gordon J Zimmerman, Borden Ladner Gervais LLP, Toronto

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