Microsoft Corporation v. BARUBIN c/o Iftekhar Hussain
Claim Number: FA0804001174478
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <msnmessenger2008.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregis.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2008.
On April 3, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregis confirmed by e-mail to the National Arbitration Forum that the <msnmessenger2008.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregis and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregis has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregis registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April
4, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 24, 2008
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@msnmessenger2008.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant manufactures and markets computer software and related products and services, including messaging services through its MSN Messenger products.
Complainant first used the MSN mark as early as 1995, and has used the mark continuously in commerce since then.
Complainant registered its trademark MSN with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,792,781, issued December 9, 2003).
Complainant has invested considerable time, effort and money in advertising and promoting its services throughout the world under the MSN mark.
Respondent is not commonly known by the <msnmessenger2008.com> domain name nor has it ever been the owner or licensee of the MSN mark.
Respondent registered the disputed <msnmessenger2008.com> domain name on September 13, 2007.
The disputed domain name resolves to a website that purports to sell Complainant’s products and services, and contains links to other third-party websites.
Respondent gains commercially through the diversion of Internet users to Respondent’s web site, both through click-through fees and through the marketing of competing products and services Respondent advertises there.
Respondent’s <msnmessenger2008.com> domain name is confusingly similar to Complainant’s MSN mark.
Respondent does not have any rights or legitimate interests in the domain name <msnmessenger2008.com>.
Respondent must have known of Complainant’s famous mark at the time it registered the contested domain name.
Respondent registered and uses the <msnmessenger2008.com> contested domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant alleges, and Respondent does not deny, that Complainant has obtained rights in the service mark MSN through registration of the mark with the United States Patent and Trademark Office (“USPTO”). This is sufficient to establish such rights in Complainant for purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Complainant also contends that
Respondent’s <msnmessenger2008.com>
domain name is confusingly similar to its
MSN mark. The <msnmessenger2008.com> domain name differs from Complainant’s mark in three ways:
(1) the generic term “messenger” has been added at the end of the mark; (2) the
number “2008” has also been added at the end of the mark; and (3) the generic
top-level domain (“gTLD”) “.com” has likewise been added. Adding to a mark generic words which describe
a Complainant’s product or business does not defeat a claim of confusing similarity. Accordingly, we conclude that the first two
described changes do not sufficiently distinguished the disputed domain name
from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar.
13, 2000) (finding that a respondent’s domain name <marriott-hotel.com>
is confusingly similar to a complainant’s MARRIOTT mark); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO
Nov. 22, 2000) (finding that “Respondent does not by adding the common
descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’,
create new or different marks in which it has rights or legitimate interests,
nor does it alter the underlying [PG&E] mark held by Complainant”).
The same is true with regard to
the addition of the generic top-level domain (“gTLD”) “.com” to the domain. See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of a domain name such as “.net” or “.com” does not
affect the domain for purposes of determining whether it is identical or
confusingly similar to a competing mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights to and legitimate interests in the <msnmessenger2008.com> domain name. Under Policy ¶ 4(a)(ii), once a complainant makes out a prima facie case against a respondent, that respondent has the burden of showing evidence that it does have rights and legitimate interests in a disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). Respondent, for its part, has failed to respond to the Complaint. In these circumstances, we are free to presume that Respondent lacks rights to or interests in its domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent failed to respond to a complaint); further see Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond can be construed as an admission that it has no legitimate interest in its domain names).
We will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name within the meaning of Policy ¶ 4(c).
We begin by noting that Complainant contends, without
opposition by Respondent, that Respondent is not commonly known by the <msnmessenger2008.com> domain name nor
has it ever been the owner or licensee of the MSN mark. Indeed the WHOIS record for the disputed
domain name lists Respondent as “BARUBIN c/o Iftekhar
Hussain.” This record permits us
to conclude that Respondent is not commonly known as <msnmessenger2008.com> pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
a respondent was not commonly known by the mark there in question and never
applied for a license or permission from a complainant to use the trademarked
name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that a respondent had no rights or legitimate
interests in domain names because it was not commonly known by a complainant’s
marks and that respondent has not used the domain names in connection with a bona
fide offering of goods and services or for a legitimate noncommercial or
fair use).
We also observe that Respondent does not deny Complainant’s allegations to the effect that Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where a respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of a complainant); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to websites unrelated to a complainant’s mark, websites where that respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in a disputed domain name where a respondent was using a complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under that complainant’s mark).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is gaining commercially
through the diversion of Internet users to Respondent’s web site, both through
click-through fees and through the marketing of competing products and services
Respondent advertises there. Respondent
does not deny these allegations. Thus we conclude that Respondent uses the
disputed domain name for commercial gain by exploiting a likelihood of
confusion with Complainant’s mark. Pursuant
to Policy ¶ 4(b)(iv), this use is evidence of registration
and use of the domain name in bad faith.
See Compaq Info. Techs.
Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb.
Forum May 29, 2002) (finding that a respondent’s use of the
<compaq-broker.com> domain name to sell a complainant’s products “creates
a likelihood of confusion with Complainant's COMPAQ mark as to the source,
sponsorship, or affiliation of the website and constituted bad faith pursuant
to Policy ¶ 4(b)(iv)”); see also Perot
Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where a domain name is obviously connected with a complainant’s well-known
marks, thus creating a likelihood of confusion for a respondent’s commercial
gain); further
see AltaVista Co. v.
Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶
4(b)(iv) where a respondent’s domain name resolved to
a website offering links to third-party websites featuring services similar to a
complainant’s).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <msnmessenger2008.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 6, 2008
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