Microsoft Corporation v Feifei Li

WIPO Case No. D2025-0255

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Feifei Li

Case No. D2025-0255

1. The Parties

The Complainant is Microsoft Corporation, United States of America (“United States”), represented by D.M.

Kisch Inc., South Africa.

The Respondent is Feifei Li, China.

2. The Domain Name and Registrar

The disputed domain name <microsoft-s.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2025. connection with the disputed domain name. On January 23, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 31, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 20, 2025. The Respondent did not submit any formal response.

On February 27, 2025, the Center notified the Parties that it would proceed to panel appointment.

The Center appointed Marilena Comanescu as the sole panelist in this matter on March 6, 2025. 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.

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4. Factual Background

The Complainant, incorporated in 1975 in the United States, is a multinational technology corporation, a leading developer and provider of personal-computer software systems and applications, cloud computing services, video games and other online services, with global operations through its subsidiaries, affiliates and/or licensees. The Complainant’s portfolio of service and product offerings have been almost exclusively distributed through the Complainant’s official stores and websites, and selected authorized distributors and retailers. Today, the Complainant’s products and services are used by approximately 1.4 billion consumers in around 190 countries across the world. As a result of the substantial investment and extensive international sales and marketing activities, the MICROSOFT brand has achieved considerable international success and reputation.

The Complainant owns a large portfolio of registered trademarks for MICROSOFT, such as the following:

- the International Trademark Registration number 1318242 for MICROSOFT (word), registered on May 27,

2016, covering goods in International Class 9; and

- the International Trademark Registration number 1142097 for MICROSOFT (word with device), registered
on August 22, 2012, designating inter alia China, covering goods and services in International Classes 9, 16,

25, 28, 35, 36, 38, 39, 41, 42, and 45.

The Complainant’s corporate website is available under the domain name <microsoft.com>.

The disputed domain name was registered on June 23, 2022, and, at the time of filing of the Complaint, it was used to resolve to a Registrar’s parking page with the message “This domain is registered, but may still be available”.

According to Annex 8.1 to the Complaint, before January 15, 2025, the disputed domain name was used in connection with a website, in Chinese language, purporting to be a provider of training and certification of the Complainant’s Microsoft goods and services, which prominently displayed the Complainant’s MICROSOFT trademarks and logo on the top of the website, using a number of the Complainant’s marketing materials, providing copyright notice at the bottom of the website and lacking any information on the identity of holder/provider of such website.

According to information in the Complaint and unrebutted by the Respondent, on January 15, 2025, following a notification filed by the Complainant with the Registrar, the Respondent approached the Complainant advising that it was planning to sell the disputed domain name and inviting the Complainant to purchase it.

On January 26, 2025, the Center received an informal email communication from a third party stating it purchased legally and reasonably the disputed domain name, claiming consumer rights protection, and requesting the amount of USD 15,000 for “emotional distress”. However, such third party did not respond to

the Center’s email communication of January 28, 2025, requesting to provide its identity and/or clarify its

relationship with the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that MICROSOFT mark is a purely imaginative term and unique to the trademark since it reproduces the MICROSOFT mark in its entirety, in addition to the non-distinctive letter

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“s”; the Respondent has no rights or legitimate interests in the disputed domain name; the Respondent is was offering unauthorised Microsoft products and services of other commercial origin, displayed the MICROSOFT trademarks and marketing materials without authorisation, failed to provide any information regarding the identity of the provider of the website under the disputed domain name; the Respondent’s behaviour shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the trademarks owned by the Complainant; the parking page does not give rise to any rights or legitimate interests on the part of the Respondent, and moreover, invites the Internet users to click on a hyperlink “get this domain”, which redirects them to the Registrar’s website and, thus, the Registrar is making commercial use of the disputed domain name, and, even if the Respondent in not receiving financial benefit, it is responsbile for the commericial use by the Registrar acting on its behalf; the Respondent has registered and is using the disputed domain name in bad faith; notwithstanding the website under the disputed domain name available before January 15, 2025, or the later use of the disputed domain name in relation to a parking page, the Respondent is clearly purporting to be an official or authorised reseller, agent or licensee of the Complainant on a global basis (or at the very least, in China) by using the Complainant’s MICROSOFT trademark in the disputed domain name together with the non-dictinctive letter “s”; the Respondent registered and used the disputed domain name with the intention to sell it to the Complainant.

not an affiliated company or licensee of the Complainant, nor is authorized in any way to use the

B. Respondent

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

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section

1.7.

While the addition of other term (here the letter “s”), and a hyphen, may bear on assessment of the second
and third elements, the Panel finds the addition of such elements does not prevent a finding of confusing
similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

According to the evidence provided in the Complaint, the Respondent has used the disputed domain name in connection with a website purporting to be a provider of Complainant’s MICROSOFT products, reproducing the Complainant’s trademarks and copyrighted marketing materials, without providing any disclaimer or information regarding the disputed domain name holder, and the relationship (in fact the lack thereof) of the disputed domain name holder and the Complainant. Furthermore, the Complainant asserts that its MICROSOFT branded goods and services are distributed through official stores and websites, and authorized distributors and retailers and the Respondent is not authorized to use its trademarks. Panels have held that the use of a domain name for illegitimate activity (e.g., the sale of counterfeit goods or impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Further, the composition of the disputed domain name which combines the Complainant’s well-known trademark with a letter suggests an affiliation with the trademark owner. UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name was registered in bad faith, with knowledge of the Complainant and its trademarks particularly because the disputed domain name is highly similar to the Complainant’s trademark which predates the registration of the disputed domain name by more than 40 years and is highly distinctive and well-known worldwide. Furthermore, the use of the disputed domain name enforces such finding.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

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According to the evidence provided in the Complaint, the disputed domain name was used in relation to a webpage promoting unauthorized products and services under the MICROSOFT trademark.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

Given that the disputed domain name incorporates the Complainant’s well-known trademark, and the website operated under the disputed domain name offered unauthorized products and services under the MICROSOFT trademark, displayed the Complainant’s trademark and logo, official advertising images, claimed copyright protection, and failed to provide accurate information about the entity operating the website under the disputed domain name, indeed in this Panel’s view, the Respondent has intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that such website is held, controlled by, or somehow affiliated with or related to the Complainant, for the Respondent’s commercial gain.

At the time of filing the Complaint, the disputed domain name was used to resolve to a Registrar’s parking page with the message “This domain is registered, but may still be available”.

Paragraph 4(b)(i) of the Policy provides the circumstance when the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that

complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs communication of

January 15, 2025 (as provided in the Complaint), and to the public at large on the Registrar’s parking page, together with the other evidence in this case, is further evidence of bad faith behavior, even if a specific amount was not clearly stipulated. WIPO Overview 3.0, section 3.1.1.

directly related to the domain name. The Panel finds that, registering a domain name highly similar to the

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can, by itself, create a presumption of bad faith for the purpose of Policy. WIPO Overview 3.0., section 3.1.4.

The Panel finds that the Complainant has established the third element of the Policy.

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 <microsoft-s.com> be transferred to the Complainant.

/Marilena Comanescu/
Marilena Comanescu
Sole Panelist
Date: March 17, 2025