national arbitration forum

 

DECISION

 

Microsoft Corporation v. ÖMER FARUK BAYRAM

Claim Number: FA0904001256850

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc., Texas, USA.  Respondent is ÖMER FARUK BAYRAM (“Respondent”), Turkey.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <msncanlishow.com>, registered with Fbs 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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 9, 2009.

 

On April 22, 2009, Fbs Inc. confirmed by e-mail to the National Arbitration Forum that the <msncanlishow.com> domain name is registered with Fbs Inc. and that Respondent is the current registrant of the name.  Fbs Inc. has verified that Respondent is bound by the Fbs 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 April 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 18, 2009 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@msncanlishow.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <msncanlishow.com> domain name is confusingly similar to Complainant’s MSN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <msncanlishow.com> domain name.

 

3.      Respondent registered and used the <msncanlishow.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Microsoft Corporation, is the owner of approximately forty-five trademark registrations for the MSN mark and related marks throughout the world and with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 2,191,997, issued September 29, 1998).  Complainant uses the MSN mark in conjunction with e-mail, instant messaging and video-streaming systems. 

 

Respondent registered the <msncanlishow.com> domain name on January 19, 2009.  Respondent is using the domain name to resolve to an adult-oriented website featuring the MSN logo, and has no affiliation with Complainant or the MSN mark. 

 

DISCUSSION

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 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.”).

 

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:

 

(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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established its rights in its MSN mark through its numerous trademark registrations throughout the world and with the USPTO pursuant to Policy ¶ 4(a)(i).  Complainant has registered the MSN mark in Turkey, where Respondent resides, without limitation (i.e., Reg. No. 2000-10,064).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). 

 

Complainant alleges that Respondent’s domain name is confusingly similar to Complainant’s MSN mark.  Respondent’s <msncanlishow.com> domain name incorporates Complainant’s MSN mark in its entirety, with the addition of the words “canli” and “show.”  Complainant states that “Canli” is a Turkish word meaning “live,” which is related to Complainant’s business and the MSN mark.  Complainant asserts that the addition of two generic words fails to alleviate the confusing similarity between Complainant’s MSN mark and Respondent’s disputed domain name, especially when the generic terms describe Complainant’s business.  The Panel finds that Respondent’s use of Complainant’s MSN mark, with the addition of two descriptive terms, fails to alleviate the confusing similarities between Complainant’s mark and Respondent’s <msncanlishow.com> domain name.  See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks.  Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity  with regard to Policy ¶ 4(a)(i).”).  Complainant further alleges that the addition of the generic top-level domain “.com” fails to differentiate the <msncanlishow.com> domain name from Complainant’s MSN mark.  The Panel concludes that top-level domains are irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis and they do not sufficiently distinguish Respondent’s disputed domain name from Complainant’s MSN mark.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also  Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).  Therefore, the Panel finds that Complainant’s MSN mark and the disputed domain name are confusingly similar under Policy ¶ 4(a)(i). 

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant has to first establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.  The burden of proof then shifts to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.  In this case, Respondent has failed to respond to the allegations made against it.  Based on Respondent’s failure to respond, the Panel may presume that Respondent lacks rights or legitimate interests in the <msncanlishow.com> domain name.  The Panel may draw any appropriate inferences from Respondent’s failure to respond to the Complaint.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Complainant has presented a prima facie case and the Panel now chooses to evaluate all the evidence in the record to determine whether Respondent has rights or legitimate interests in the disputed domain name. 

 

Complainant alleges that Respondent was not authorized to use the MSN mark and therefore has no rights or legitimate interests in the <msncanlishow.com> domain name.  Complainant asserts that Respondent is not commonly known by the disputed domain name based on the WHOIS information, which lists the registrant as “ÖMER FARUK BAYRAM.”  The Panel concludes that based on the evidence in the record and the WHOIS information, Respondent is not commonly known by the <msncanlishow.com> domain name.  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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). 

 

Complainant also alleges that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent is using the domain name solely to divert Internet users to an adult-oriented website, which does not constitute a bona fide offering of goods and services or a noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).  The <msncanlishow.com> domain name resolves to a website featuring adult-oriented material, and the Panel finds that such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See McClatchy Mgmt. Servs., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that the respondent’s use of the disputed domain names to divert Internet users to a website that features adult-oriented material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use); see also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”).  Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name. 

 

Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s use of the <msncanlishow.com> domain name constitutes bad faith registration and use based on Respondent’s attempt to attract Internet users to Respondent’s website for commercial gain under Policy ¶ 4(b)(iv).  Respondent’s <msncanlishow.com> domain name resolves to an adult-oriented website that presumably generates revenue for Respondent, which is further evidence of Respondent’s bad faith registration and use.  The Panel concludes that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”). 

 

Complainant also alleges that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii) because the disputed domain name, which is confusingly similar to Complainant’s MSN mark, resolves to an adult-oriented website.  The Panel concludes that absent any evidence to the contrary, such use constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to a pornographic website.  The panel stated,  “[W]hatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name). 

 

Complainant has satisfied 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 <msncanlishow.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  June 5, 2009

 

 

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