national arbitration forum

 

DECISION

 

Microsoft Corporation v. Francesco Pennisi

Claim Number: FA0908001280894

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc., Texas, USA.  Respondent is Francesco Pennisi (“Respondent”), Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <contattimsn.com>, registered with Tucows Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus  R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 24, 2009.

 

On August 24, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <contattimsn.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 August 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 14, 2009 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@contattimsn.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 16, 2009 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <contattimsn.com> domain name is confusingly similar to Complainant’s MSN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <contattimsn.com> domain name.

 

3.      Respondent registered and used the <contattimsn.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Since 1975 Complainant, Microsoft Corporation, has manufactured, marketed and sold computer software and related products and services.  Complainant uses the MSN mark on an internet portal providing instant messaging, video chat, dating and personal ads, games, and other services.  Complainant’s instant messaging software is called “MSN Messenger.”  Complainant holds nearly 300 registrations around the world for the MSN mark, including forty-five with the United States Patent and Trademark Office (“USPTO”) (See, e.g., Reg. No. 2,153,763 issued April 28, 1998), four with the Office for Harmonization in the Internal Market (“OHIM”) in the European Community (See, e.g., Reg. No. 1,489,103 issued June 6, 2001) and one with the Ufficio Italiano Brevetti e Marchi (“UIBM”) in Respondent’s home country of Italy (Reg. No. 720,888 issued July 25, 1997). 

 

On August 30, 2006, Respondent registered the <contattimsn.com> domain name, which is being used to resolve to a website offering online services in direct competition to those Complainant offers under its MSN mark.  Additionally, Respondent uses Complainant’s MSN logo in several places on the website resolving from the <contattimsn.com> domain name.

 

DISCUSSION

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 the 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:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or 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 domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registrations of its MSN mark with the USPTO (See, e.g., Reg. No. 2,153,763 issued April 28, 1998), the OHIM (See, e.g., Reg. No. 1,489,103 issued June 6, 2001), and the UIBM (Reg. No. 720,888 issued July 25, 1997) each satisfy the requirement of Policy ¶ 4(a)(i) that Complainant establish rights in the mark.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).

 

The <contattimsn.com> domain name is composed of (1) the generic word “contatti,” which means “contact” in Italian, (2) Complainant’s MSN mark, and (3) the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a gTLD and a generic term to Complainant’s mark are insufficient to distinguish the disputed domain name from Complainant’s MSN mark under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Villanueva, FA 236589 (Nat. Arb. Forum April 2, 2004) (“The addition of the generic French and Spanish words is insufficient to distinguish the domain names from Complainant’s marks.”); see also Yurman Studio, Inc. v. Melnicki, FA 1272698 (Nat. Arb. Forum Aug. 19, 2009) (“It is widely accepted that the addition of a gTLD such as ‘.com’ is trivial and will not of itself have any influence on the assessment of confusing similarity between trademark and domain name.”).  Therefore, the Panel finds that the <contattimsn.com> domain name is confusingly similar to Complainant’s MSN mark under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <contattimsn.com> domain name.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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).”). 

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <contattimsn.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the MSN mark, and the WHOIS information identifies Respondent as “Francesco Pennisi.”  Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Respondent is using the disputed domain name to operate a website offering online services such as instant messaging, dating and personal ads, video chat, and games in direct competition with Complainant.  The Panel infers that Respondent is profiting in some way from the <contattimsn.com> domain name.  The Panel finds that using Complainant’s mark to directly compete with Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

Additionally, the website resolving from the <contattimsn.com> domain name displays Complainant’s MSN logo in several places.  In some instances, Respondent uses Complainant’s logo next to links for services that directly compete with services offered by Complainant, giving the impression that the link will allow Internet users to use Complainant’s services when, in fact, they are Respondent’s services.  The Panel finds that Respondent is passing itself off as Complainant.  The Panel finds that this is further evidence that 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 pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.  See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the <contattimsn.com> domain name to host services such as instant messaging, video chat, and online games in direct competition with Complainant.  The Panel infers that Respondent is attempting to disrupt Complainant’s business by directly competing under a confusingly similar domain name.  The Panel finds that this use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).

 

Additionally, the Panel finds that due to the confusingly similar nature of the disputed domain name and Respondent’s repeated use of Complainant’s logo Internet users are likely to become confused about Complainant association or sponsorship of the resolving website.  The Panel infers that Respondent is attempting to profit from this confusion.  Therefore the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).

 

On the website resolving from the disputed domain name, Respondent uses Complainant’s MSN logo in several places, giving the impression that the competing services are actually those of Complainant when they are not.  The Panel finds that Respondent is attempting to pass itself off as Complainant.  The act of Respondent passing itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <contattimsn.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson. Jr., Panelist

Dated:  September 29, 2009

 

 

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