Microsoft Corporation v. Redonna Noriega
Claim Number: FA1107001399890
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Redonna Noriega (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftstores.com> and <msnde.com>, registered with GoDaddy.com.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2011; the National Arbitration Forum received payment on July 21, 2011.
On July 23, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <microsoftstores.com> and <msnde.com> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2011 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@microsoftstores.com and postmaster@msnde.com. Also on July 26, 2011, 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.
A timely Response was received and determined to be complete on July 29, 2011.
On August 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant, founded in 1975, claims to be a worldwide leader in software, and is the owner of a number of trademark registrations for MICROSOFT and MSN.
The MICROSOFT mark was first used in 1975, and has been rated as the third most valuable brand in the world (Copy of survey as Exhibit B of the Complaint). The Complainant further refers to a number of previous UDRP decisions considering the MICROSOFT mark as distinctive, well-known and with a considerable goodwill. The Complainant operates its official online “Microsoft Store” at the domain name <microsoftstore.com>.
The Complainant states that it has used the MSN trademark since 1995, operating (among other things) the MSN portal providing an Internet search engine, news, e-mail, and other services. Also as to MSN, the Complainant refers to a number of previous UDRP decisions wherein the MSN mark has been found to be well-known and world famous.
Exhibits C and G of the Complaint shows copies of U.S.A. trademark registrations for MICROSOFT and MSN, issued long before the registration of the disputed domain names.
The Complainant argues that the disputed domain name <microsoftstores.com> is confusingly similar to the Complainant’s trademark MICROSOFT, as it incorporates the trademark in its entirety, adding only the generic term “stores” and the top level domain .com. Further, the Complainant states that <msnde.com> is confusingly similar to the Complainant’s trademark MSN, as it incorporates the MSN mark in its entirety, adding only the generic country code “de” – which Complainant refers to as being related to the Complainant’s MSN services in Germany – along with the top level domain .com.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by MICROSOFT or MSN, nor has Respondent used <microsoftstores.com> or <msnde.com> in connection with a bona fide offering of goods and services for a legitimate non-commercial or fair use. Both disputed domain names are parked with cash parking service displaying links to third party web sites and, according to the Complainant, presumably providing click-through revenues to the Respondent.
Finally, the Complainant concludes that the Respondent has registered the disputed domain names in bad faith, as Complainants trademarks were famous and familiar to countless consumers at the time of Respondent’s registration of <microsoftstores.com> and <msnde.com>.
B. Respondent
The Respondent agrees to the Complainant’s transfer request, stating that Respondent only purchased the disputed domain names as “a lot of domain names for sale” on a certain web site. The Respondent further states that Respondent has not used <microsoftstores.com> and <msnde.com>, and never had a plan to do so.
The Panel finds that the Complainant has established extensive trademark rights in the MICROSOFT and MSN trademarks, as shown by Exhibits C and G of the Complaint. Further, the Panel agrees with the Complainant’s statements that both trademarks are well known, especially in respect of Internet related services.
The Respondent registered <microsoftstores.com> on February 2, 2010, and <msnde.com> on January 11, 2011.
According to Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), “a Panel shall 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 this case, the Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant.
Therefore, under these special circumstances, the Panel decides to forego the traditional UDRP analysis, not to make any further findings or discussion, and instead order an immediate transfer of the <microsoftstores.com> and <msnde.com> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Giving the special circumstances in this case, the fact that Respondent has consented to the transfer of both disputed domain names, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftstores.com> and <msnde.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 9, 2011
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