National Arbitration Forum

 

DECISION

 

Microsoft Corporation v. Area Auto Corp

Claim Number: FA0709001075532

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225.  Respondent is Area Auto Corp (“Respondent”), 11230 gold exp. dr. 310#114, Gold River, CA 95670.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <msnrealestate.com>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 11, 2007.

 

On September 10, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <msnrealestate.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 September 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 4, 2007 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@msnrealestate.com by e-mail.

 

A timely Response was received and determined to be complete on October 3, 2007.

 

A timely Additional Submission was submitted by Complainant and determined to be complete on October 8, 2007.

 

On October 11, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

1.  The domain name <msnrealestate.com> is confusingly similar to Complainant’s famous MSN mark.

2.  Respondent has no rights or legitimate interests in the <msnrealestate.com> domain name.

3.  The domain name was registered and used in bad faith.

 

B. Respondent

            1.  <msnrealestate.com> stands for “mortgage service and real estate.”

            2.  Microsoft does not own MSN.

            3.  There has been no bad faith.           

 

C. Additional Submissions

1.  Nowhere on Respondent’s website is the term “mortgage service and real estate” used.

2.  All Google sites listed in response to “MSN real estate” relate to Complainant’s site.

3.  Respondent did not reply to accusations of registration and use in bad faith implying guilt.

 

FINDINGS

The Panel finds for the Complainant and orders the website <msnrealestate.com> be transferred to Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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

 

Complainant asserts rights in the MSN mark under Policy ¶ 4(a)(i) through several registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 2,565,513 issued April 30, 2002 and Reg. No. 2,498,608 issued October 16, 2001).  The Panel finds that Complainant’s trademark registrations are sufficient to establish rights in the MSN mark under Policy ¶ 4(a)(i).  See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding “that Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”).

 

Complainant argues that Respondent’s <msnrealestate.com> domain name is confusingly similar to Complainant’s MSN mark as it uses the mark in its entirety and simply adds the descriptive words “real estate” and the generic top-level domain (“gTLD”) “.com” to the mark.  Complainant argues that part of its business includes offering real estate services online, which it calls “MSN Real Estate.”  The Panel finds that the addition of a gTLD is not relevant to the determination of whether the mark is confusingly similar under Policy ¶ 4(a)(i).  Additionally, the Panel finds that the addition of the descriptive words “real estate” does not sufficiently alter the mark to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).

 

Finally, Respondent contends that the <msnrealestate.com> domain name is not confusingly similar because Respondent was using “MS” in combination with “n” and “real estate” to represent “Mortgage Service and Real Estate.”  However, Complainant asserts in its Additional Submission that there is no evidence presented by Respondent to indicate that Respondent is known by “Mortgage Service and Real Estate” and therefore Complainant contends that Respondent’s argument does nothing to alleviate the confusingly similar aspects of Complainant’s MSN mark under Policy ¶ 4(a)(i), particularly given the fame of the MSN mark.  See 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

Rights 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 shifts to Respondent to show it does have 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 Policy ¶ 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 asserts that Respondent is not commonly known by the <msnrealestate.com> domain name.  Respondent’s WHOIS information identifies Respondent as “Area Auto Corp.”  Complainant also offers evidence to indicate that the <msnrealestate.com> domain name resolves to a website for Diane and Brennaan Velten, a husband and wife Re/Max real estate team offering real estate services at the <msnrealestate.com> domain name.  The Panel finds that Respondent is not commonly known by the <msnrealestate.com> domain name under Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).

                                                                                                

Complainant further contends that Respondent is using the <msnrealestate.com> domain name to redirect Internet users to Respondent’s website, which offers competing real estate services as those offered by Complainant under the MSN mark.  The Panel finds that Respondent’s use of the disputed domain name is not use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).

 

Finally, Respondent contends that it has rights or legitimate interests in the <msnrealestate.com> domain name because it uses the website in connection with its “Mortgage Service and Real Estate” business.  However, Complainant contends in its Additional Submission that Respondent’s website at the disputed domain name does not even use the terms “Mortgage Service and Real Estate” and therefore Respondent is not commonly known by the name and is instead using Complainant’s well-known mark to redirect Internet users to Respondent’s website, which does not show that Respondent has rights or legitimate interests under Policy ¶ 4(a)(ii).  See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”); see also Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”).  The Panel rejects the contention of Respondent.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the disputed domain name to redirect Internet users to Respondent’s website which offers competing goods and services.  The Panel finds that such use by Respondent constitutes a disruption of Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).

 

Complainant contends that Respondent registered and is using the <msnrealestate.com> domain name to redirect Internet users to Respondent’s website for the profit of Respondent.  Complainant contends that Internet users seeking Complainant’s real estate services under the MSN mark may become confused as to Complainant’s affiliation with the <msnrealestate.com> domain name.  Complainant contends that Respondent is profiting through the redirection of clients to its real estate services.  Therefore, the Panel concludes that Respondent’s use of the disputed domain name to attract Internet users to its website for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Finally, Respondent contends that it did not intend to register the disputed domain name with “MSN” but rather just the abbreviations “MS” and “n,” and therefore, Respondent had no bad faith.  However, Complainant contends in its Additional Submission that Respondent has failed to offer any evidence that Respondent, or any other consumer, uses “MSN” as shorthand for “Mortgage Service and.”  The Panel finds that Respondent’s use of the <msnrealestate.com> domain name to operate a competing website that is likely to create confusion amongst Internet users as to Complainant’s affiliation is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Nat’l Ass’n of  Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that although a trademark involves words that could be generic in a different context, the reputation of that mark in the field where the mark is associated, means that the intentional registration and use of a misspelling of that mark manifests the intent to capitalize on the mark, and constitutes bad faith); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

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 <msnrealestate.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

John J. Upchurch, Panelist

Dated:  November 9, 2007

 

 

National Arbitration Forum


 

 

 

 

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