Microsoft Corporation v. Prashant Shantilal
Claim Number: FA0906001268785
Complainant is Microsoft Corporation (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <msnmatrimony.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 18, 2009.
On June 17, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <msnmatrimony.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 June
22, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 13, 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@msnmatrimony.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 21, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <msnmatrimony.com> domain name is confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <msnmatrimony.com> domain name.
3. Respondent registered and used the <msnmatrimony.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MSN, sells computer software and related products and services. Complainant markets wedding-related services, marketed as the MSN Matrimony software package, under the MSN mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on April 28, 1998 (Reg. No. 2,153,763). Complainant has used the MSN mark continuously in commerce since at least as early as 1995.
Respondent registered the <msnmatrimony.com> domain name on November 25, 2006. The disputed domain name resolves to a website where matrimonial services are being offered and sold.
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.
The Panel finds that Complainant has
established sufficient rights in the MSN mark through registration of the mark
with the USPTO pursuant to Policy ¶ 4(a)(i).
Complainant contends that
Respondent’s <msnmatrimony.com> domain name is confusingly similar to its MSN mark. The <msnmatrimony.com> domain name differs from Complainant’s mark in two ways:
(1) the descriptive term “matrimony” has been added to the beginning of the
mark; and (2) the generic top-level domain (gTLD) “.com” has been added to the
mark. The Panel finds that the addition
of a descriptive term is not sufficient to distinguish a domain name from a
mark pursuant to Policy ¶ 4(a)(i). See
Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126
(WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is
confusingly similar to the SUTTON mark because the addition of descriptive or
non-distinctive elements to the distinctive element in a domain name is
immaterial to the analysis under Policy ¶ 4(a)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007)
(finding that the addition of the descriptive term “wine” to the complainant’s
BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient
to distinguish the mark from the domain name under Policy ¶ 4(a)(i)). The
Panel also finds that the addition of the gTLD “.com”
does not sufficiently distinguish a domain name from the incorporated mark for
the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation
of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that these two changes do not sufficiently
distinguish the disputed domain name from Complainant’s mark, and therefore, it
finds that Respondent’s disputed domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <msnmatrimony.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). 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 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.”).
Complainant contends that Respondent is not commonly known
by the <msnmatrimony.com>
domain name nor has it ever been the owner or licensee of the MSN mark. The WHOIS listing for the disputed domain
name lists Respondent as “Prashant Shantilal,”
and Respondent has failed to present any evidence that is contrary to
Complainant’s contentions. The Panel
therefore finds that Respondent is not commonly known by the <msnmatrimony.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese
v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by
the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including
the WHOIS information as well as the complainant’s assertion that it did not
authorize or license the respondent’s use of its mark in a domain name); see also IndyMac
Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name).
At the website that
resolves from the <msnmatrimony.com>
domain name, Respondent is
offering matrimonial services that compete for market share with Complainant’s
MSN Matrimony software package.
The Panel finds that Respondent’s competing use of the <msnmatrimony.com>
domain name is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(finding that the respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with the
complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is diverting Internet
customers from Complainant’s website to Respondent’s website that resolves from
the <msnmatrimony.com> domain
name. Complainant also contends that
Respondent intentionally disrupts Complainant’s business by this diversion to
Respondent’s own competing website. The
Panel finds that Respondent’s disruption of Complainant’s business is evidence
that Respondent has registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Disney Enters.,
Inc. v. Noel, FA 198805 (Nat. Arb.
Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar
to Complainant's mark to divert Internet users to a competitor's website. It is
a reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Lubbock Radio
Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding that domain names were registered and used in bad faith where the
respondent and the complainant were in the same line of business in the same
market area).
Complainant also contends that Respondent is gaining commercially from selling competing services on the website that resolves from the <msnmatrimony.com> domain name. The Panel finds that Respondent’s commercial gain from its sales of matrimonial services is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msnmatrimony.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: August 5, 2009
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