National Arbitration Forum

 

DECISION

 

Microsoft Corporation v. Daniel Kaufman

Claim Number: FA0807001213955

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Daniel Kaufman (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mymsn.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically July 3, 2008; the National Arbitration Forum received a hard copy of the Complaint July 7, 2008.

 

On July 7, 2008, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the <mymsn.com> domain name is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name.  Innerwise, Inc. d/b/a Itsyourdomain.com verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 8, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 28, 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@mymsn.com by e-mail.

 

A timely Response was received and determined to be complete on July 24, 2008.

 

Complainant filed an Additional Submission July 24, 2008, which was timely and complete in compliance with the National Arbitration Forum’s Supplemental Rule 7.

 

On July 31, 2008, 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.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following allegations in this proceeding:

 

The domain name that Respondent registered, <mymsn.com>, is identical or confusingly similar to Complainant’s protected MSN mark.

 

Respondent has no rights to or legitimate interests in the MSN mark and domain name.

 

Respondent registered and used the domain name in bad faith.

 

B.     Respondent makes the following response allegations:

 

Respondent does not address part one of the three-pronged showing of identicality or confusing similarity.

 

Respondent urges that he has rights in the <mymsn.com> domain name that was registered in 1998 and claims this date to be earlier in time than Complainant’s use of the My MSN services at its domain site.

 

That although Complainant alleges interference with its marketplace by Respondent’s domain name, the disputed domain name consists of generic terms that can “stand for” “Masters in Nursing” rather than Complainant’s MSN mark.

 

Respondent alleges that Complainant offered to buy the domain name for $70.00 and then offered him $50,000.00 but that when he accepted the offer Complainant changed its mind.

 

Respondent admits to forwarding traffic from the disputed domain name to a music site he owns.

 

Respondent alleges that he has many profitable domain name sites in addition to the <myabc> and <mykodak> domain name as alleged by Complainant.

 

Respondent avers that registration of such names combining MY with the marks of others does not establish bad faith in this instance.

 

C.     Complainant’s Additional Submission sets out the following:

 

Complainant offers that “[i]t is evident that Respondent registered the domain name for the purpose of trying to sell the domain name to Complainant in 1999 for $50,000 and Complainant refused.”

 

Complainant notes that Respondent concedes that he is forwarding traffic using the disputed domain name for personal gain.

 

Complainant also charges that in regards to Respondent’s contention that MSN could stand for “Masters in Nursing,” nothing at Respondent’s site concerns nursing.

 

Complainant registered the MSN trademark in 1995, prior to Respondent’s registration of the disputed domain name.

 

Complainant notes that Respondent did not address the issues of identicality and/or confusing similarity.

 

Complainant notes that Respondent failed to address any rights to use the MSN mark.

 

Complainant urges that Respondent’s past history of registering <mymastercard.com>, <my abc.com>, and <mykodak.com> permit an inference that Respondent acts in bad faith.

 

FINDINGS

Complainant established rights in the MSN mark as of the date of filing in 1997 (Reg. No. 2,153,763 issued April 28, 1998, filed April 25, 1997) with the United States Patent and Trademark Office (“USPTO”).

 

Complainant established that its mark is known throughout the world and is registered with other governmental trademark authorities worldwide. 

 

Complainant’s rights in its mark were established prior to Respondent’s registration of the disputed domain name in 1998.

 

The domain name is confusingly similar to Complainant’s well-known and protected mark.

 

Respondent has not shown rights to or legitimate interests in the domain name containing in its entirety Complainant’s protected mark.

 

Respondent acted in bad faith in registering and using the disputed domain name.

 

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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

 

Identical to and/or Confusingly Similar

 

Complainant asserts its rights in the MSN mark (Reg. No. 2,153,763 issued April 28, 1998, filed April 25, 1997), which was registered with the United States Patent and Trademark Office (“USPTO”) as well as with other governmental trademark authorities worldwide.  Complainant also states that the disputed domain name was registered after Complainant’s mark was registered.  The Panel finds that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).

 

Complainant urges that Respondent’s <mymsn.com> domain name is confusingly similar to Complainant’s MSN mark, in that the disputed domain name incorporates Complainant’s entire mark and adds the generic word “my” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of “my” does not distinguish the disputed domain name under Policy ¶ 4(a)(i); the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).

 

Respondent contends that the <mymsn.com> domain name is comprised of common, descriptive terms and as such cannot be found to be identical to Complainant’s mark. This is not an argument that goes to the first prong of the burden and the Panel finds that a determination as to whether or not the domain name consists of generic words is not a part of the discussion under Policy ¶ 4(a)(i) because this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical to or confusingly similar to Complainant’s mark.  Moreover, Complainant has a trademark registration for the MSN mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

Respondent also argues that the <mymsn.com> domain name is not confusingly similar to Complainant’s MSN mark because he incorporates the word “my.”  Respondent argues that Complainant did not commence its “my msn” services using the mark until after Respondent registered the disputed domain name.  Since the Panel finds that Respondent’s <mymsn.com> domain name was registered after Complainant’s rights in the mark were recognized by the appropriate patenting authorities, this argument fails.

 

The Panel finds that 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).  Then the burden shifts to Respondent to show that it does have rights to or legitimate interests in the domain name.  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 argues that Respondent is not commonly known by the disputed domain name, in that the registrant of record is listed as “Daniel Kaufman.”  Further, Complainant urges that Respondent is not licensed or authorized to use Complainant’s MSN mark.  Respondent offered no evidence to suggest that Complainant had in any way authorized by license or permission Respondent to use the MSN mark in a domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and Respondent has not come forward with proof that he otherwise has a right to use Complainant’s mark in a domain name.  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).

 

Complainant argues that the disputed domain name redirects Internet users to a website featuring Respondent’s commercial online music website called “Jango,” which resolves from the <jango.com> domain name.  Complainant asserts that Respondent is listed as that company’s CEO in press releases and actively seeks to sign up new members for the business.  Complainant contends that this music-related business competes with Complainant’s own music services.  The Panel finds that since Respondent is using Complainant’s protected mark in a competing website and disputed domain name, Respondent has not shown or provided the Panel with evidence to permit even an inference that Respondent acquired rights by making 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 Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit).

 

Complainant states in its Additional Submission that Respondent offered to sell the disputed domain name in 1999 for $50,000.00, which Complainant refused.  Complainant states that it did offer to reimburse Respondent for the registration costs, worth $70.00.  Complainant also submitted an e-mail and letter in support of its position that put Respondent on notice that Complainant would protect its exclusive rights to the MSN mark.  The Panel finds that the greater weight and degree of the credible proof supports Complainant’s position that Respondent offered to sell the disputed domain name, which evidences Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

Respondent argues that it has a legitimate music business at the <jango.com> domain name.  The Panel has no information before it to refute Respondent’s claim as to the <jango.com> site and finds that argument to be irrelevant to the outcome here.  The issue is whether Respondent can show rights in the domain name being used to confuse Internet users by diverting them to Respondent’s <jango.com> site.  Respondent also states that he was unaware of any potential for confusion that might result from his registering a domain name including the well-known Complainant’s protected mark and then diverting those who came to the site to Respondent’s own services. The Panel finds that Respondent offered no proof to support his claims and has not shown a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).

 

Respondent also argues that the terms of the <mymsn.com> domain name are generic and of common use and therefore, Complainant cannot have an exclusive monopoly on the terms on the Internet.  The alphabet may be skewed by random selection to produce any number of combinations that may appear on the surface to be generic; however, when the shifting of letters produces a mark that matches one in which a registered holder has exclusive rights, the holder’s rights prevail.  It is unlikely that Respondent could produce credible proof that he established rights in the internationally-known Complainant’s protected mark

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel finds that the greater weight of the credible proof offered by the parties suggests that Respondent made an offer to sell the disputed domain name.  This supports findings that Respondent registered and used Complainant’s MSN mark in a domain name in bad faith under Policy ¶ 4(b)(i).  See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).

 

Complainant argues that Respondent has also been the Respondent in numerous other UDRP decisions in which the disputed domain names were transferred to the respective complainants in those cases.  See Mastercard Int’l v. Kaufman, D2006-1031 (WIPO Oct. 11, 2006); see also Am. Broad. Co., Inc. v. Kaufman, FA 535518 (Nat. Arb. Forum Sept. 21, 2005).  Respondent has offered no proof that explains registrations of such domain names as <mymastercard.com>, <myabc.com>, <mykodak.com> and, in fact, <mymsn.com> without obtaining permission from those well-known entities to register and use their marks in a domain name.  The Panel finds that Respondent has engaged in a pattern of preventing trademark owners from reflecting their marks in corresponding domain names. This supports findings that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Here, the Panel finds that this pattern of conduct by Respondent permits this Panel to infer that here also, Respondent primarily intended to disrupt Complainant’s business.  This inference supports findings that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii).  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Further, Complainant asserted here that Respondent used the confusingly similar disputed domain name to intentionally attract Internet users to its commercial website. The Panel agrees; these factors add additional support for findings of  bad faith registration and use under Policy ¶ 4(b)(iv).  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); 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).

 

Moreover, Complainant asserts that Respondent had actual or constructive notice of Complainant and its registered trademark at the time he registered the disputed domain name, given the relative fame of the mark.  The Panel agrees, pursuant to Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).  Indeed, this Respondent qualifies for findings of bad faith registration and use under all four of the Policy ¶ 4(b) factors: 1. Respondent attempted to sell the domain name for an amount far in excess of reasonable registration costs, 2. Respondent has engaged in a pattern of conduct that seeks to deprive others of the ability to obtain domain names corresponding to their trademarks, 3. Respondent has used the domain name to disrupt Complainant’s business, and 4. Respondent has used the domain name to divert Internet users for commercial gain.  

 

            The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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

 

 

 

Hon. Carolyn Marks Johnson, Panelist
Dated: August 8, 2008.

 

 

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