Microsoft Corporation v. N/A c/o driss aloui a/k/a Carol Nicolas a/k/a helpshop c/o mycertstore
Claim Number: FA1009001347934
Complainant is Microsoft Corporation ("Complainant"), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is N/A c/o driss aloui a/k/a Carol Nicolas a/k/a helpshop c/o mycertstore ("Respondent"), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <msnreload.com>, <msn-reload.net>, and <msn-reload.org>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 22, 2010; the National Arbitration Forum received payment September 22, 2010.
On September 26, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <msnreload.com>, <msn-reload.net>, and <msn-reload.org> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@msnreload.com, postmaster@msn-reload.net, and postmaster@msn-reload.org. Also on October 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <msnreload.com>, <msn-reload.net>, and <msn-reload.org>, are confusingly similar to Complainant’s MSN mark.
2. Respondent has no rights to or legitimate interests in the <msnreload.com>, <msn-reload.net>, and <msn-reload.org> domain names.
3. Respondent registered and used the <msnreload.com>, <msn-reload.net>, and <msn-reload.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, provides software, services, and solutions for individuals and businesses. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USTPO”) for the MSN mark (e.g., Reg. No. 2,153,763 issued April 28, 1998). Complainant also holds trademark registrations with France’s Institut National de la Propriété Industrielle (e.g., Reg. No. 95/595,530 issued November 2, 1995). Complainant uses the MSN mark in connection with its messenger and Internet services.
Respondent registered the <msnreload.com> domain name October 30, 2009, the <msn-reload.net> domain name October 5, 2009, and the <msn-reload.org> domain name April 21, 2010. The <msnreload.com> domain name resolves to a website that advertises software that claims to “hack” MSN Messenger, one of Complainant’s products, as well as “hack” Complainant’s email service to reveal Internet users’ passwords. The resolving website also features hyperlinks to third-party websites that compete with Complainant. The <msn-reload.net>, and <msn-reload.org> domain names resolve to inactive websites.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
In the instant proceeding, Complainant alleges that the entities that control the domain names at issue are effectively controlled by the same person and/or entity operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that, although Respondent uses several aliases, a single person owns and uses the disputed domain names. Complainant states that the <msnreload.com> domain name resolves to a website at the <msnreplay.net> domain name. This site prominently displays the text “msn-reload.net,” which references the <msn-reload.net> domain name. In addition, Complainant claims a message sent to the National Arbitration Forum from nongage@gmail.com, the email address associated with the <msn-reload.org> domain name, admits ownership of the <msn-reload.com> domain name. Complainant states that the <msn-reload.com> domain name resolves to a website that contains the same logo featured on the website resolving from the <msnreload.com> domain name.
The Panel finds that Complainant presented sufficient evidence that the disputed domain names are controlled by the same entity. Therefore, the Panel chooses to proceed with the instant proceeding.
Complainant asserts rights in the MSN mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 2,153,763 issued April 28, 1998). Complainant also asserts rights in the MSN mark through its registration of the mark with France’s Institut National de la Propriété Industrielle (e.g., Reg. No. 95/595,530 issued November 2, 1995). The Panel finds that these trademark registrations sufficiently prove Complainant’s rights in the MSN mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant alleges that the <msnreload.com>, <msn-reload.net>, and <msn-reload.org> domain names are confusingly similar to its MSN mark. Respondent fully incorporates Complainant’s MSN mark in each of the disputed domain names and then merely attaches the generic term “reload” to the mark. Respondent also inserts a hyphen between Complainant’s mark and the term “reload” in the <msn-reload.net> and <msn-reload.org> domain names. Finally, Respondent attaches the generic-top level domains (“gTLDs”) “.com,” “.net,” and “.org” to Complainant’s mark in the disputed domain names. The Panel finds that these additions do not distinguish Respondent’s disputed domain names from Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, this Panel finds that Respondent’s <msnreload.com>, <msn-reload.net>, and <msn-reload.org> domain names are confusingly similar to Complainant’s MSN mark under Policy ¶ 4(a)(i).
The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing that Respondent lacks rights and legitimate interests in the <msnreload.com>, <msn-reload.net>, and <msn-reload.org> domain names under a Policy ¶ 4(a)(ii) analysis. The burden then shifts to Respondent to prove it does have rights to or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, this Panel still evaluates the record before determining whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant states that Respondent is not licensed or authorized to use its mark in a domain name. Furthermore, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the <msnreload.com>, <msn-reload.net>, and <msn-reload.org> domain names 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant claims that the <msnreload.com> domain name resolves to a website that advertises software that claims to “hack” MSN Messenger, one of Complainant’s products, as well as “hack” Complainant’s email service to reveal the passwords of Internet users. The Panel presumes that Respondent profits from this use. In addition, Complainant claims that the resolving website provides hyperlinks to third-party competing websites and claims that Respondent profits from this use through referral fees. Finally, Complainant contends that Respondent uses the <msnreload.com> domain name in an attempt to pass itself off as Complainant. A screen shot of Respondent’s resolving website shows Complainant’s MSN mark featured throughout the site. This image also shows Complainant’s MSN logo displayed in the title bar. Based on the evidence in the record, the Panel finds that Respondent does not use the <msnreload.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 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).”).
The Panel finds that Respondent failed to make active use of the <msn-reload.net> and <msn-reload.org> domain names. In such circumstances, the Panel may find that Respondent does not use the <msn-reload.net> and <msn-reload.org> domain names 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant claims that Respondent uses the <msnreload.com> domain name to redirect Internet traffic to competing products and to Complainant’s competitors. The Panel agrees and finds that this use disrupts Complainant’s business, which is evidence to support findings that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
As previously discussed, Respondent’s <msnreload.com> domain name is confusingly similar to Complainant’s MSN mark. Moreover, the <msnreload.com> domain name resolves to a website that prominently features Complainant’s mark and displays Complainant’s MSN logo in the title bar. Furthermore, the Panel finds that Respondent most likely profits from its use of the disputed domain name through the receipt of advertisement and referral fees. Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's MSN mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site. Accordingly, the Panel finds that Respondent’s use of the <msnreload.com> domain name supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Respondent’s attempt to pass itself off as Complainant provides additional evidence that Respondent registered and is using the <msnreload.com> domain name in bad faith under 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 DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and that the Panel may consider the totality of the circumstances when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Panels have found that failure to make active use of a domain name constitutes bad faith. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO). Respondent registered the <msn-reload.net> domain name October 5, 2009 and the <msn-reload.org> domain name April 21, 2010, many years after Complainant acquired rights in the MSN mark. Consequently, the Panel finds that Respondent’s passive holding of the disputed domain names supports findings in this case that Respondent registered and passively held these disputed domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used or passively held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msnreload.com>, <msn-reload.net>, and <msn-reload.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 10, 2010.
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