Microsoft Corporation v. Josh Logan
Claim Number: FA0801001139572
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <msnforadults.com> and <msnadultcams.com>, registered with GoDaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 23, 2008.
On January 23, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <msnforadults.com> and <msnadultcams.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the Godaddy.Com, 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 January 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2008 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@msnforadults.com and postmaster@msnadultcams.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has manufactured, marketed, and sold computer hardware and software products since 1975.
Complainant also established an online news and information network in 1995 which it promotes under the MSN mark.
Services offered under Complainant’s MSN mark have become well-known and popular with Internet users.
Complainant owns a trademark registration for the MSN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,153,763, issued April 28, 1998), and is the registrant of several domain names incorporating the MSN mark.
Respondent is not commonly known by either of the <msnforadults.com> and <msnadultcams.com> domain names.
Complainant has not given Respondent permission to use its MSN mark for any purpose.
Respondent registered the <msnforadults.com> and <msnadultcams.com> domain names on October 30, 2007.
The disputed domain names resolve to a website that invites the user to “register now for your free adult msn account to start watching.”
A user who clicks on the main link is redirected to a website located at the <athomesexnetwork.com> domain name, which contains adult-oriented content.
Respondent’s <msnforadults.com> and <msnadultcams.com> domain names are confusingly similar to Complainant’s MSN mark.
Respondent does not have any rights or legitimate interests in the <msnforadults.com> and <msnadultcams.com> domain names.
Respondent registered and uses the <msnforadults.com> and <msnadultcams.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the MSN mark with the USPTO
sufficiently establishes its rights in the mark for the purposes of Policy ¶
4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003): “Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”
Respondent’s <msnforadults.com> and <msnadultcams.com>
domain names contain Complainant’s entire MSN mark, and simply add the generic
terms “for,” “adult(s),” and “cams.” The
addition of these generic terms does not render the disputed domain names
distinct from Complainant’s MSN mark for purposes of the Policy. See Arthur Guinness Son & Co. (
Moreover, because a top-level domain is a required element of all domain names, Respondent’s inclusion of the generic top-level domain “.com” in the disputed domain names is irrelevant. See also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he
addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name registrants .
. . .
The Panel thus concludes that the <msnforadults.com> and <msnadultcams.com> domain names
are confusingly similar to Complainant’s MSN mark, and that Policy ¶ 4(a)(i) has therefore been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant makes out a prima facie showing that Respondent lacks rights to and legitimate interests in the <msnforadults.com> and <msnadultcams.com> domain names, the burden shifts to Respondent to prove that it nonetheless does have such rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In the present case, Complainant has established a prima facie case under the Policy.
Respondent’s failure to answer the Complaint therefore raises the presumption that Respondent lacks rights to and legitimate interests in the <msnforadults.com> and <msnadultcams.com> domain names. See 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.” See also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004). However, the Panel will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
In this connection, we first note that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by either of the <msnforadults.com> and <msnadultcams.com> domain names. The WHOIS information likewise suggests that Respondent is “Josh Logan,” and there is no other evidence in the record to indicate that Respondent is known by the disputed domain names. In addition, it is undisputed that Complainant has not given Respondent permission to use its MSN mark for any purpose. Thus, we conclude that Respondent is not commonly known by the disputed domain names, which indicates a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question).
We also observe that Respondent does not deny Complainant’s
allegation that its domain names resolve to a website displaying links to
third-party websites offering adult-oriented content. We presume that Respondent profits when
Internet users click on these links, and we therefore conclude that Respondent
is not using the disputed domain names in connection with either 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), which is further evidence of a lack of
rights and legitimate interests under Policy ¶ 4(a)(ii). See Paws, Inc. v. Zuccarini,
FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a
domain name that is confusingly similar to a competing mark to divert Internet
users to an adult-oriented website “tarnishes Complainant’s mark and does not
evidence noncommercial or fair use of the domain name by a respondent”); see
also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that a
respondent did not use a domain name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because that respondent used the domain name to divert Internet users seeking a
complainant's goods or services to adult-oriented material, while presumably
earning a commission or referral fees from advertisers).
The Panel therefore concludes that Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainant contends, and Respondent does not deny,
that Respondent registered and is using the <msnforadults.com>
and <msnadultcams.com>
domain names in bad faith pursuant to Policy ¶ 4(a)(iii). As mentioned previously, we presume that
Respondent benefits commercially when Internet users are redirected to the
website that resolves from the <msnforadults.com>
and <msnadultcams.com>
domain names, which are confusingly similar to Complainant’s MSN mark. Respondent is thus taking commercial
advantage of a likelihood of confusion between Complainant’s MSN mark and its apparent
affiliation with the disputed domain names.
This is evidence of Respondent’s bad faith registration and use of the
domain names under Policy ¶ 4(b)(iv). See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003):
Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.
See also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Finally, Respondent’s undenied use of the disputed domain names to redirect Internet users to websites featuring adult-oriented content further indicates that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that a respondent’s tarnishing use of disputed domain names to redirect Internet users to adult-oriented websites is evidence that the domain names were being used in bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where a respondent attracted users to its website for commercial gain and linked that website to adult-oriented websites).
For these reasons, the Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <msnforadults.com> and <msnadultcams.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 28, 2008
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