Microsoft lawyers come down hard on Mikerosoft man

Mike Morris, who has a web site called Mikerosoft.ca, has had a letter from the Vole's learned fiends objecting to the domain name he's using for his driver site.

A disclaimer he has on his web site isn't enough, and we suspect that he's further antagonised the Microsofties by using a font which is too close to the Vole's own.

But, be that as it may, one does come away with the definite impression that heavy handed here might be understating things, somewhat... Mike Morris tells us he's never made any money from the site, or intended to. µ

January 6, 2004

Dear Mr. Morris: Re: Objection by Microsoft Corporation to the Registration and Use of Domain Name MIKEROSOFT.CA by Mike Morris

We are Canadian intellectual property counsel to Microsoft Corporation, and its Canadian subsidiary Microsoft Canada Co., owners of the famous trade-mark and trade-name MICROSOFT. Our clients have extensively used the trade-mark and trade-name MICROSOFT in Canada in association with a wide variety of products and services in the computer industry, publishing industry, educational and consulting fields, and others. As a result of such use, the trade-mark and the trade-name MICROSOFT are widely recognized by and well-known to the public in Canada as identifying the wares, services and business of our clients. Our clients have thereby developed a valuable and substantial goodwill in association with the trade-mark and trade-name MICROSOFT in Canada.

With regard to their Internet activities, our clients operate Internet web sites at www.microsoft.com, www.microsoft.ca and www.microsoft.com/canada which display and advertise our clients' many computer-related products and services to Canadians, and other customers and potential customers around the world.

In addition, our client, Microsoft Corporation is the owner of a family of trade-mark registrations worldwide for the MICROSOFT mark, including Canadian Registration Nos. TMA309,288; TMA453,570; TMA471,989; TMA482,615; and TMA520,594. Copies of these registrations are enclosed with the confirmation copy of this letter. These trade-mark registrations grant to our client the exclusive right to the use throughout

Canada of the trade-mark MICROSOFT in respect of those wares and services for which they are registered, as well as the right to prevent any use by a person who sells, distributes or advertises wares or services in association with a confusing trade-mark, trade-name or domain name.

It has recently come to our clients' attention that you have registered and are using the domain name MIKEROSOFT.CA in association with a web site offering news, commentary and downloads of Microsoft-compatible software.

Please be advised that your use and registration of the domain name MIKEROSOFT.CA as aforesaid is clearly confusing with our clients' registered trade-mark and trade-name MICROSOFT, as well as their domain names MICROSOFT.COM and MICROSOFT.CA. As well, your registration of this domain name and your operation of the www.mikerosoft.ca web site represents to the public that you and your web site are somehow connected with, associated with, or sponsored by our clients. Please note that under the law, the disclaimer that you have placed on your web site is not sufficient to alleviate any likelihood of confusion.

In addition to trade-mark infringement, passing off, depreciation of goodwill, bad faith domain name registration and the tort of interference with economic interests, your actions constitute a breach of Section 7(b) of the Trade-marks Act which provides:

7. No person shall

(b) direct public attention to his wares, services, or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his wares, services or business and the wares, services or business or another.

You should know that in a case such as this, the owner of a trade-mark is entitled to all remedies by way of injunction, damages, profits and otherwise that are or may be conferred by law for the infringement of a right. This letter is expressly written without prejudice to any claim for damages or other relief that Microsoft Corporation and Microsoft Canada Co. may have in the event that litigation against you and your company may prove necessary.

Please note as well that our client, Microsoft Corporation, is the owner of a number of registrations in the United States for the trade-mark MICROSOFT. Your current activities may also give rise to significant remedies against you in the U.S. courts.

Your registration of the domain name MIKEROSOFT.CA was clearly done in bad faith and our clients are considering taking action in the Courts and/or under the Canadian Domain Name Resolution Policy (CDRP). In order to avoid such proceedings, our clients have instructed us to acquire your immediate written undertaking that:

1. you have permanently ceased operating a web site in association with the domain name MIKEROSOFT.CA and/or any other web site in association with a domain name that contains the trade-mark and trade-name MICROSOFT, or any other words confusing with our client's trade-mark and trade-name MICROSOFT;

2. you will never again register any domain name anywhere in the world that contains the trade-mark and trade-name MICROSOFT, or any other words confusing with our client's trade-mark and trade-name MICROSOFT; and

3. you will execute all necessary documents and/or provide all necessary confirmations by e-mail that we will provide to you to transfer the domain name MIKEROSOFT.CA to our client.

If we receive your immediate co-operation, then our clients will consider waiving their damages. However, if we do not hear from you by January 12, 2004, our client may commence legal and/or administrative proceedings against you without further notice.

Yours very truly,

SMART & BIGGAR