Microsoft Corporation v. Jean Pierre Lafont a/k/a Yasir Yasir
Claim Number: FA1009001349611
Complainant is Microsoft Corporation ("Complainant"), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Jean Pierre Lafont a/k/a Yasir Yasir ("Respondent"), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <msn-reload.com> and <msnreplay.net>, registered with Namebay.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2010; the National Arbitration Forum received payment on September 30, 2010. The Complaint was submitted in both French and English.
On September 30, 2010, Namebay confirmed by e-mail to the National Arbitration Forum that the <msn-reload.com> and <msnreplay.net> domain names are registered with Namebay and that Respondent is the current registrant of the names. Namebay has verified that Respondent is bound by the Namebay registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 6, 2010, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of October 26, 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@msn-reload.com, postmaster@msnreplay.net. Also on October 6, 2010, the French language 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 November 5, 2010, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement had been satisfied through the French language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <msn-reload.com> and <msnreplay.net> domain names are confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <msn-reload.com> and <msnreplay.net> domain names.
3. Respondent registered and used the <msn-reload.com> and <msnreplay.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a provider of software and Internet services and operates the MSN portal which provides news and information, along with other services. Complainant owns trademark registrations for its MSN mark with trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”), the European Union Office for Harmonization in the Internal Market (“OHIM”), and the France National Institute of Industrial Property (“NIIP”):
USPTO
Reg. No. 2,153,763 issued April 28, 1998;
Reg. No. 2,418,517 issued January 9, 2001;
Reg. No. 2,600,020 issued July 30, 2002;
OHIM
Reg. No. 250,373 issued February 1, 1999;
Reg. No. 1,488,857 issued March 21, 2001;
Reg. No. 1, 489,103 issued June 6, 2001;
Reg. No. 2,375,988 issued October 9, 2002; &
NIIP
Reg. No. 95/595,530 issued November 2, 1995.
Respondent, Jean Pierre Lafont a/k/a Yasir Yasir, registered the <msn-reload.com> domain name on March 28, 2009 and the <msnreplay.net> domain name on July 22, 2010. The disputed domain name resolve to websites offering products and programs for sale which compete with Complainant’s products, like antivirus software, and also offering unauthorized programs claiming to “hack” MSN Messenger and Complainant’s Hotmail service.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant owns trademark registrations for its MSN mark with trademark authorities around the world, including the USPTO, the OHIM, and the NIIP:
USPTO
Reg. No. 2,153,763 issued April 28, 1998;
Reg. No. 2,418,517 issued January 9, 2001;
Reg. No. 2,600,020 issued July 30, 2002;
OHIM
Reg. No. 250,373 issued February 1, 1999;
Reg. No. 1,488,857 issued March 21, 2001;
Reg. No. 1, 489,103 issued June 6, 2001;
Reg. No. 2,375,988 issued October 9, 2002; &
NIIP
Reg. No. 95/595,530 issued November 2, 1995.
The Panel finds that evidence of trademark registrations with national trademark authorities is sufficient to establish Complainant’s rights in the MSN mark for the purposes of Policy ¶ 4(a)(i). See 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’)”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant alleges that Respondent’s <msn-reload.com> and <msnreplay.net> domain names are confusingly similar to Complainant’s MSN mark. Both disputed domain names combine Complainant’s mark with either the “reload” or “replay” generic terms and a generic top-level domain (“gTLD”), in this case, “.net” or “.com.” The <msn-reload.com> domain name also includes a hyphen. The Panel finds that the presence of a generic term combined with Complainant’s mark does not negate confusing similarity according to Policy ¶ 4(a)(i). See 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 Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel also finds that neither an added hyphen nor an attached gTLD modify the disputed domain name enough to distinguish it from Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel may find that Respondent’s <msn-reload.com> and <msnreplay.net> domain names are confusingly similar to Complainant’s MSN mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent is not affiliated with Complainant in any way, is not licensed to use Complainant’s mark, and is not an authorized vendor, supplier, or distributor of Complainant’s services and goods. The WHOIS information for the <msn-reload.com> and <msnreplay.net> domain names do not reflect that Respondent is commonly known by the disputed domain names. The Panel may find, therefore, that Respondent is not commonly known by the disputed domain names and accordingly lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). 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 name, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant contends that the resolving websites at the <msn-reload.com> and <msnreplay.net> domain names promote and offer for sale various third-party products not authorized by Complainant and some which compete with Complainant’s products. These products include antivirus software and software that claims to “hack” Complainant’s MSN Messenger and Hotmail services. The Panel finds that using domain names containing Complainant’s mark to attract Internet users to revenue-generating websites does not comport with the requirements of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also 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”).
Complainant alleges that the websites resolving from Respondent’s <msn-reload.com> and <msnreplay.net> domain names feature Complainant’s MSN mark and a logo design that is confusingly similar to Complainant’s MSN Messenger logo. Complainant asserts that Respondent makes use of the MSN mark and logo in order to pass itself off as Complainant and suggest an affiliation between Complainant and Respondent. The Panel finds that Respondent’s actions therefore show a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s <msn-reload.com> and <msnreplay.net> domain names resolve to websites that offer various third-party products, such as antivirus software, that compete with Complainant’s products. Complainant argues that these competing products disrupt Complainant’s business, which indicates bad faith registration and use according to Policy ¶ 4(b)(iii). See 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).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Complainant alleges that Respondent uses Complainant’s MSN mark and logo in the <msn-reload.com> and <msnreplay.net> domain names and on the resolving websites in order to attract Complainant’s customers to its website. Complainant argues that Respondent aims to confuse Internet users as to an affiliation between Complainant and Respondent with the hope that Respondent will profit if Complainant purchases any of the commercial products offered at Respondent’s disputed domain names. The Panel finds that Respondent’s intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant argues that Respondent attempts to pass itself off as Complainant at the <msn-reload.com> and <msnreplay.net> domain names by featuring Complainant’s MSN mark and a logo that is confusingly similar to Complainant’s MSN messenger logo. The Panel finds that such efforts to pass itself off as Complainant show bad faith registration and use according to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); 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.”).
The Panel finds 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 <msn-reload.com> and <msnreplay.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 9, 2010
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