Microsoft Corporation v. Dang Ngo
Claim Number: FA1511001645686
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Dang Ngo (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msngames.org>, registered with NameSilo, LLC.
The undersigned certifies that she 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 Forum electronically November 5, 2015; the Forum received payment November 5, 2015.
On November 7, 2015, NameSilo, LLC confirmed by e-mail to the Forum that the <msngames.org> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC verified that Respondent is bound by the NameSilo, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2015, 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@msngames.org. Also on November 9, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Complainant’s Allegations in this Proceeding:
Policy ¶ 4(a)(i)
Complainant has rights in the MSN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,153,763, registered April 28, 1998). Respondent’s <msngames.org> domain name is confusingly similar to the MSN mark because it contains the mark, combined with the descriptive term “games” and the generic top-level domain (“gTLD”) “.org.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <msngames.org> domain name because Respondent is not affiliated with Complainant or authorized to use Complainant’s MSN mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to pass itself off as Complainant in an attempt to phish for Internet users’ personal information. See Compl., at Attached Ex. D (resolving website w/login area).
Policy ¶ 4(a)(iii)
Respondent registered and uses the <msngames.org> domain name in bad faith because the resolving website is used to pass itself off as being operated by or affiliated with Complainant. Respondent registered the <msngames.org> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the internationally well-known MSN mark.
Respondent’s Allegations in Response in this Proceeding:
Respondent failed to submit a formal Response.
The Panel notes that Respondent created the <msngames.org> domain name October 22, 2015, some 17 years after Complainant’s registration of its famous and internationally well-known mark.
FINDINGS:
Complainant established rights to and legitimate interests in its registered mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in Complainant’s protected mark or the disputed domain name containing that mark.
Respondent registered a mark that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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."
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.
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.”).
Identical or Confusingly Similar:
Complainant alleges it has rights in the MSN mark through its registration with the USPTO (e.g., Reg. No. 2,153,763, registered on April 28, 1998). Complainant provided proof of registration in Exhibit C, along with registration information for the MSN mark in other countries. Therefore, the Panel finds that Complainant has rights in the MSN mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complainant alleges that Respondent’s <msngames.org> domain name is confusingly similar to the MSN mark because it contains the mark, combined with the term “games” and the gTLD “.org.” Complainant urges that the term “games” is descriptive of services offered by Complainant in conjunction with the MSN mark, as evidenced by Exhibit B. Past panels have found that adding descriptive terms and gTLDs is not enough to distinguish a mark and a domain name. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Accordingly, this Panel finds that Respondent’s <msngames.org> domain name is confusingly similar to the MSN mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name containing the Complainant’s protected mark that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to/or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <msngames.org> domain name. Complainant asserts that Respondent is known as “Dang Ngo,” and that Respondent is not, in any way, affiliated with Complainant. Past panels have found that a lack of authorization combined with a lack of WHOIS information to show being known by a domain name can show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the <msngames.org> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the <msngames.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to pass off as being operated by or affiliated with Complainant, and because Respondent provides a login page which may be used to phish for personal information. Complainant provided a screenshot of the resolving website, in Exhibit D, which displays the words “MSN Games” and requests that Internet users enter a username and password. Complainant provided screenshots of a website it operates, in Exhibit B, for comparison. The Panel finds that Respondent is attempting to foster a non-existent relationship or association with Complainant and the <msngames.org> domain name, and/or it attempts to phish for Internet users’ personal information, and therefore, the Panel finds that Respondent is not using the domain to provide any bona fide offering of goods or services or any legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the Complainant’s protected mark and the disputed domain name containing it; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant alleges that Respondent uses the <msngames.org> domain name in bad faith because the resolving website is used to pass itself off as being operated by or affiliated with Complainant. Complainant provided a screenshot of the resolving website in Exhibit D, which displays the words “MSN Games” and invites Internet users to enter a username and password. Complainant provided as well screenshots of a website it operates in Exhibit B for comparison. The Panel finds Complainant’s evidence sufficient to support findings that Respondent uses the <msngames.org> domain in bad faith pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Lastly, Complainant alleges that Respondent registered the <msngames.org> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the MSN mark. Complainant urges that because the MSN mark is famous and given Respondent’s use of the website, Respondent demonstrated awareness of Complainant’s rights. Past panels required actual knowledge to support findings of bad faith and held that constructive knowledge is not enough. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); but also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Here the Panel finds that Respondent had such actual knowledge of Complainant’s rights in the MSN mark at the time of registration, given the name given to the domain name, the use, and the lack of some alternate interpretation of the acronym “MSN,” and thus the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered the <msngames.org> domain and that Respondent did so in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name 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 <msngames.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 15, 2015
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