Microsoft Corporation v. Colimense Network c/o Victor Manuel Sanchez Contreras
Claim Number: FA1008001341837
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., Texas, USA. Respondent is Colimense Network c/o Victor Manuel Sanchez Contreras (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prodigymsn.net>, registered with Abacus America, 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 August 18, 2010.
On August 19, 2010, Abacaus America, Inc. confirmed by e-mail to the National Arbitration Forum that the <prodigymsn.net> domain name is registered with Abacus America, Inc. and that Respondent is the current registrant of the name. Abacus America, Inc. has verified that Respondent is bound by the Abacus America, 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 August 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@prodigymsn.net by e-mail. Also on August 20, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 17, 2010, 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" through submission of a Written Notice, as defined in Rule 1. 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:
Since 1975, Complainant has manufactured and marketed computer software and related products under the MSN mark.
Complainant’s products and services include computer operating systems; software programming tools; Internet platform and development tools; online news, information and entertainment services; computer security products; and more.
In 2000, Complainant engaged in a joint venture with Telmex to form a Spanish language Internet portal directed to the Mexican market.
This service is accessible through the <prodigy.msn.com> and <prodigymsn.com> domain names.
Complainant owns trademark registrations for the MSN mark with trademark authorities around the world, including the Mexican Industrial Property Institute (“MIPI”), including Reg. No. 511,180, issued November 28, 1995, and the United States Patent and Trademark Office (“USPTO”), including Reg. No. 2,153,763, issued April 28, 1998.
Respondent is not commonly known by the disputed domain name or affiliated with Complainant in any way.
Respondent is not licensed to use Complainant’s mark and is not an authorized vendor, supplier or distributor of Complainant’s products or services.
Respondent registered the <prodigymsn.net> domain name on October 12, 2009.
Respondent’s <prodigymsn.net> domain name is confusingly similar to Complainant’s MSN mark.
Respondent does not have any rights to or legitimate interests in the <prodigymsn.net> domain name.
The disputed domain name resolves to a website attempting to pass itself off as Complainant’s by displaying the exact Prodigy MSN logo and mark that appears on Complainant’s actual website along with a search box.
Respondent registered and uses the <prodigymsn.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is 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.
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 in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name was registered and is being used by Respondent in bad faith.
Complainant owns trademark registrations for the MSN mark with trademark authorities around the world. This is evidence of Complainant’s rights in the MSN mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations around the world).
Respondent’s <prodigymsn.net> domain name is confusingly similar to Complainant’s MSN mark because the disputed domain name incorporates Complainant’s full mark, adding only the descriptive term “prodigy,” which refers to Complainant and its services in Mexico, and the generic top-level domain (“gTLD”) “.net.” These differences fail to distinguish the disputed domain name from Complainant’s mark under the Policy. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to that complainant’s mark); see also 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.”). Similarly, the gTLD “.net” is not an effective differentiating feature of the disputed domain name and does nothing to dispel confusing similarity. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
Therefore, the Panel finds that Respondent’s <prodigymsn.net> domain name is confusingly similar to Complainant’s MSN mark pursuant to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent with respect to its allegation that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has established such a prima facie case, the burden of proof shifts to Respondent to show that it has rights to or legitimate interests in the domain name. See 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 a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name.
Complainant has satisfied its burden in this regard, thereby transferring the burden to Respondent to demonstrate, if it can, its rights or legitimate interests in the disputed domain name. However, Respondent has not contested the allegations of Complainant. This permits us to conclude that Complainant’s contentions as true, and that Respondent lacks rights to or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.
Nevertheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name or affiliated with Complainant in any way, and that Respondent is not licensed to use Complainant’s mark and is not an authorized vendor, supplier or distributor of Complainant’s products or services. Moreover, the WHOIS information for the <prodigymsn.net> domain name lists the registrant only as “Colimense Network”, which does not resemble the disputed domain name. On this record, we are compelled to conclude that Respondent is not commonly known by the <prodigymsn.net> domain name and thus has no rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We also note that Complainant argues, without objection from Respondent, that Respondent attempts to pass itself off as Complainant at the website resolving from the <prodigymsn.net> domain name by displaying the logo associated with Complainant’s Prodigy MSN website and the MSN mark. This effort to pass itself off as Complainant does not indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the contested domain under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent attempted to pass itself off as a complainant online in a blatant unauthorized use of that complainant’s mark, which served as evidence that that respondent had no rights to or legitimate interests in a disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003):
It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent displays Complainant’s MSN mark and logo at the <prodigymsn.net> domain name in order to pass itself off as Complainant and thus create confusion among Internet users. Respondent presumably uses Complainant’s mark and logo in this way for some commercial gain. This behavior demonstrates bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain because that respondent likely profited from this diversionary scheme); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002):
Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.
For this reason, the Panel finds 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 <prodigymsn.net> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 30, 2010
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