Microsoft Corporation v. Libela Gestion sms a/k/a Libela Gestion sms c/o Dilma Aedo Mendez
Claim Number: FA0910001290945
Complainant is Microsoft
Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <directx-11.com>, <directx11-fr.com>, <directx11-nl.com>, <internet-explorer8-nl.com>, <iexplorer-8.com>, <iexplorer8-fr.com>, <iexplorer8-pl.com>, <iexplorer8-pt.com>, <mediaplayer12-gratuit.com>, <live-messenger-msn.com>, <msn-messenger-live-pl.com>, <msn-messenger-live.com>, <msn-messenger-pt.com>, and <msn-messenger2009.com>, registered with 1 & 1 Internet Ag.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 22, 2009; the National Arbitration Forum received a hard copy of the Complaint October 23, 2009. The Complaint was submitted in both Spanish and English.
On October 26, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <directx-11.com>, <directx11-fr.com>, <directx11-nl.com>, <internet-explorer8-nl.com>, <iexplorer-8.com>, <iexplorer8-fr.com>, <iexplorer8-pl.com>, <iexplorer8-pt.com>, <mediaplayer12-gratuit.com>, <live-messenger-msn.com>, <msn-messenger-live-pl.com>, <msn-messenger-live.com>, <msn-messenger-pt.com>, and <msn-messenger2009.com> domain names are registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the names. 1 & 1 Internet Ag verified that Respondent is bound by the 1 & 1 Internet Ag 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 November 3, 2009, a Spanish language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 23, 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@directx-11.com, postmaster@directx11-fr.com, postmaster@directx11-nl.com, postmaster@internet-explorer8-nl.com, postmaster@iexplorer-8.com, postmaster@iexplorer8-fr.com, postmaster@iexplorer8-pl.com, postmaster@iexplorer8-pt.com, postmaster@mediaplayer12-gratuit.com, postmaster@live-messenger-msn.com, postmaster@msn-messenger-live-pl.com, postmaster@msn-messenger-live.com, postmaster@msn-messenger-pt.com, and postmaster@msn-messenger2009.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2009, 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.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The disputed domain names that Respondent registered, <directx-11.com>, <directx11-fr.com>, and <directx11-nl.com>, are confusingly similar to Complainant’s DIRECTX mark.
Respondent’s <internet-explorer8-nl.com>, <iexplorer-8.com>,
<iexplorer8-fr.com>, <iexplorer8-pl.com>, and <iexplorer8-pt.com>
domain names are confusingly similar to Complainant’s INTERNET EXPLORER
mark.
Respondent’s <mediaplayer12-gratuit.com> domain name is
confusingly similar to Complainant’s WINDOWS MEDIA PLAYER mark.
Respondent’s <live-messenger-msn.com>, <msn-messenger-live-pl.com>, <msn-messenger-live.com>, <msn-messenger-pt.com>, and <msn-messenger2009.com> domain names are confusingly similar to Complainant’s MSN mark.
2. Respondent has no rights to or legitimate interests in the <directx-11.com>, <directx11-fr.com>, <directx11-nl.com>, <internet-explorer8-nl.com>, <iexplorer-8.com>, <iexplorer8-fr.com>, <iexplorer8-pl.com>, <iexplorer8-pt.com>, <mediaplayer12-gratuit.com>, <live-messenger-msn.com>, <msn-messenger-live-pl.com>, <msn-messenger-live.com>, <msn-messenger-pt.com>, and <msn-messenger2009.com> domain names.
3. Respondent registered and used the <directx-11.com>, <directx11-fr.com>, <directx11-nl.com>, <internet-explorer8-nl.com>, <iexplorer-8.com>, <iexplorer8-fr.com>, <iexplorer8-pl.com>, <iexplorer8-pt.com>, <mediaplayer12-gratuit.com>, <live-messenger-msn.com>, <msn-messenger-live-pl.com>, <msn-messenger-live.com>, <msn-messenger-pt.com>, and <msn-messenger2009.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, manufactures, markets, and sells computer software and related product and services. Complainant has offered these products and services since 1975. Since 1995, Complainant also has offered gaming and graphics technologies and software under its DIRECTX trademark. Complainant’s INTERNET EXPLORER mark relates to web browsers and related technologies, and has done so since 1995. Under Complainant’s MSM mark, Complainant operates an Internet search engine, as well as news, e-mail, instant messaging, and other services. Finally, Complainant offers a full featured music and video player called WINDOWS MEDIA PLAYER. Complainant has provided twelve different versions of the WINDOWS MEDIA PLAYER and has continuously marketed under and used the WINDOWS MEDIA PLAYER mark. Complainant holds multiple trademark registrations for its DIRECTX (e.g., Reg. No. 2,051,539 issued August 17, 1997), INTERNET EXPLORER (e.g., Reg. No. 2,277,112 issued August 13, 1997), and MSN mark (e.g., Reg. No. 2,153,763 issued April 25, 1997) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <directx-11.com>, <directx11-fr.com>, <directx11-nl.com>, <internet-explorer8-nl.com>, <iexplorer-8.com>, <iexplorer8-fr.com>, <iexplorer8-pl.com>, <iexplorer8-pt.com>, <mediaplayer12-gratuit.com>, <live-messenger-msn.com>, <msn-messenger-live-pl.com>, <msn-messenger-live.com>, <msn-messenger-pt.com>, and <msn-messenger2009.com> domain names no earlier than August 24, 2009. The disputed domain names each resolve to websites that are nearly identical to Complainant’s websites relating to Complainant’s respective marks contained in the disputed domain names. Respondent offers Complainant’s products under Complainant’s respectively related marks and attempts to pass itself off as Complainant.
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."
Given 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 will draw such inferences as the Panel 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 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 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.
Complainant contends it has established rights in the
DIRECTX, INTERNET EXPLORER, and MSN marks.
Previous panels have found that trademark registration with a federal
trademark authority is sufficient to establish rights in a mark.
Complainant contends that Respondent’s <directx-11.com>, <directx11-fr.com>, and <directx11-nl.com> domain names are confusingly similar to Complainant’s DIRECTX mark. The disputed domain names contain Complainant’s entire DIRECTX mark and simply adds the hyphen, the number “11,” which relates to the current version of Complainant’s DIRECTX gaming and graphics technologies software, and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the additions of a hyphen, a number, and a gTLD fail to adequately distinguish a disputed domain name from a complainant’s mark. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also 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.”). Therefore, the Panel finds Respondent’s <directx-11.com>, <directx11-fr.com>, and <directx11-nl.com> domain names are confusingly similar to Complainant’s DIRECTX mark under Policy ¶ 4(a)(i).
Complainant alleges
that Respondent’s <internet-explorer8-nl.com>, <iexplorer-8.com>,
<iexplorer8-fr.com>, <iexplorer8-pl.com>, and <iexplorer8-pt.com>
domain names are confusingly similar to Complainant’s INTERNET EXPLORER
mark. The <internet-explorer8-nl.com>
domain name contains Complainant’s mark and adds two hyphens, deletes the space
between the terms in Complainant’s mark, adds the number “8,” adds two letters
“nl,” and adds the gTLD “.com.” The <iexplorer-8.com>, <iexplorer8-fr.com>, <iexplorer8-pl.com>,
and <iexplorer8-pt.com> domain names abbreviate the term “internet”
to “i,” add the number “8,” and add the gTLD “.com.” Some of the disputed
domain names also add two letter, either “pl” or “pt.” The Panel finds these addition alterations
all fail to sufficiently distinguish the disputed domain names from
Complainant’s mark. See Health Devices Corp. v.
Complainant further
argues Respondent’s <mediaplayer12-gratuit.com> domain name is
confusingly similar to Complainant’s WINDOWS MEDIA PLAYER mark. The disputed domain name deletes the term
“windows,” adds the number “12,” adds the hyphen, adds the generic term
“gratuit,” and adds the gTLD “.com.”
Past panels have found the deletion of a term,
the addition of a number, the addition of a generic term, and the addition of a
gTLD fail to adequately distinguish the disputed domain name from Complainant’s
mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO
Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name
<4icq.com> does nothing to deflect the impact on the viewer of the mark
ICQ and is therefore confusingly similar); see
also 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 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).
Therefore, the Panel finds that Respondent’s
<mediaplayer12-gratuit.com> domain name is confusingly
similar to Complainant’s WINDOWS MEDIA PLAYER mark pursuant to Policy ¶ 4(a)(i).
Complainant claims Respondent’s <live-messenger-msn.com>, <msn-messenger-live-pl.com>, <msn-messenger-live.com>, <msn-messenger-pt.com>, and <msn-messenger2009.com> domain names are confusingly similar to Complainant’s MSN mark. The disputed domain names add one of the descriptive terms “live” and/or “messenger,” which relate to Complainant’s instant messaging services, add hyphens, and add the gTLD “.com.” The Panel finds the additions of a descriptive term, a hyphen, and a gTLD fail to adequately distinguish the disputed domain names from Complainant’s mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds that Respondent’s <live-messenger-msn.com>, <msn-messenger-live-pl.com>, <msn-messenger-live.com>, <msn-messenger-pt.com>, and <msn-messenger2009.com> domain names are confusingly similar to Complainant’s MSN mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel examines the record to determine whether evidence before the Panel tends to suggest that Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c) before making a determination. 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent offered
no evidence in this proceeding, and no evidence in the record suggests that
Respondent is commonly known by the disputed domain names. Complainant asserts that Respondent is not
authorized to use the DIRECTX, INTERNET EXPLORER, WINDOWS MEDIA PLAYER,
and MSN marks. The WHOIS information does not reflect that
Respondent has been commonly known by any one of the disputed domain names. Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the disputed domain
names pursuant to Policy ¶ 4(c)(ii). See 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); see
also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate
interests in a disputed domain name where there was no evidence in the record
indicating that the respondent was commonly known by the disputed domain name).
The disputed domain names resolve to websites that are
nearly identical to each of Complainant’s websites based on Complainant’s related
marks that are contained in each respective disputed domain name. Respondent also offers Complainant’s products
under Complainant’s own marks but in the process attempts to pass itself off as
Complainant. The Panel finds that this use of the confusingly similar disputed domain
names is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use of the domain name under Policy ¶
4(c)(iii). See Kmart of
The Panel finds that
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The disputed domain names resolve to websites that are
nearly identical to Complainant’s websites that relate to each of Complainant’s
marks that have been opportunistically used in each of Respondents respective
disputed domain names. Respondent offers
Complainant’s products under Complainant’s own marks and attempts to pass
itself off as Complainant. Internet users who are interested in
Complainant and Complainant’s computer software and related products and
services, are likely to become confused
as to Complainant’s affiliation and sponsorship of these disputed resolving
websites. Respondent attempts to profit
from that confusion. The Panel finds that
Respondent can be presumed to be receiving click-through fees from these
transactions and that supports findings of bad faith registration and use under
Policy ¶ 4(b)(iv).
See Identigene, Inc. v.
Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(finding that the respondent acted in bad faith by registering the
<fossilwatch.com> domain name and using it to sell various watch brands
where the respondent was not authorized to sell the complainant’s goods).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directx-11.com>, <directx11-fr.com>, <directx11-nl.com>, <internet-explorer8-nl.com>, <iexplorer-8.com>, <iexplorer8-fr.com>, <iexplorer8-pl.com>, <iexplorer8-pt.com>, <mediaplayer12-gratuit.com>, <live-messenger-msn.com>, <msn-messenger-live-pl.com>, <msn-messenger-live.com>, <msn-messenger-pt.com>, and <msn-messenger2009.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 21, 2009.
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