Microsoft Corporation v. Rodney Mayers c/o REM Holdings
Claim Number: FA1012001363690
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Rodney Mayers c/o REM Holdings (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clubmsn.us> and <microsoftphilanthropy.us>, registered with 1&1 INTERNET AG.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 15, 2010; the Forum received a hard copy of the Complaint on December 16, 2010.
On December 15, 2010, 1&1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <clubmsn.us> and <microsoftphilanthropy.us> domain names are registered with 1&1 INTERNET AG and that Respondent is the current registrant of the names. 1&1 INTERNET AG has verified that Respondent is bound by the 1&1 INTERNET AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 17, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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. Respondent’s <clubmsn.us> domain name is confusingly similar to Complainant’s MSN mark.
Respondent’s <microsoftphilanthropy.us> domain name is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <clubmsn.us> and <microsoftphilanthropy.us> domain names.
3. Respondent registered and used the <clubmsn.us> and <microsoftphilanthropy.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, was founded in 1975 and is a worldwide computer software manufacturer and distributor. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its MSN (e.g., Reg. No. 2,153,763 issued April 28, 1998) and MICROSOFT marks (e.g., Reg. No. 1,200,236 issued July 6, 1982).
Respondent, Rodney Mayers c/o REM Holdings, registered the <clubmsn.us> and <microsoftphilanthropy.us> domain names on May 15, 2010 and July 11, 2010, respectively. Respondent’s disputed domain names fail to resolve to active websites; instead each domain name resolves to a web page that displays, “Error 404 – Not found.”
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has presented evidence to show that it owns numerous trademark registrations with the USPTO for its MSN (e.g., Reg. No. 2,153,763 issued April 28, 1998) and MICROSOFT marks (e.g., Reg. No. 1,200,236 issued July 6, 1982). The Panel finds that such evidence is sufficient to establish Complainant’s rights in the MSN and MICROSOFT marks under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also 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.”).
Complainant first argues that the <clubmsn.us> domain name is confusingly similar to Complainant’s MSN mark because the domain name contains its entire mark while adding the generic term “club” and the country-code top-level domain (“ccTLD”) “.us.” A domain name containing a complainant’s entire mark in addition to a generic term and top-level domain is not sufficient to distinguish the domain name from the respective complainant’s mark under Policy ¶ 4(a)(i). See American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under UDRP ¶ 4(a)(i)); see also 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 <clubmsn.us> domain name is confusingly similar to Complainant’s MSN mark pursuant to Policy ¶ 4(a)(i).
Further, Complainant contends that the <microsoftphilanthropy.us> domain name is confusingly similar to Complainant’s MICROSOFT mark because the domain name contains Complainant’s entire mark while adding the generic term “philanthropy” and the ccTLD “.us.” The Panel agrees and finds that Respondent’s <microsoftphilanthropy.us> domain name is confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i). See American Express Co. v. MustNeed.com; see also Gardline Surveys Ltd. v. Domain Fin. Ltd.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not possess rights and legitimate interests in the <clubmsn.us> and <microsoftphilanthropy.us> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <clubmsn.us> and <microsoftphilanthropy.us> domain names. Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names. See American 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will analyze the evidence in the record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
There is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <clubmsn.us> and <microsoftphilanthropy.us> domain names. Therefore, the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that Respondent is not commonly known by the <clubmsn.us> and <microsoftphilanthropy.us> domain names. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s MSN or MICROSOFT marks. The WHOIS information identifies the domain name registrant as “Rodney Mayers c/o REM Holdings,” which Complainant contends is not similar to Respondent’s <clubmsn.us> and <microsoftphilanthropy.us> domain names. Respondent has failed to respond to these allegations and has failed to present evidence that would suggest that Respondent is commonly known by the disputed domain names. Therefore, the Panel concludes that Respondent is not commonly known by the <clubmsn.us> and <microsoftphilanthropy.us> domain names pursuant to Policy ¶ 4(c)(iii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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 argues, and submits screen-shot evidence to show, that Respondent’s disputed domain names do not resolve to active websites. Rather, the disputed domain names resolve to a web page that displays, “Error 404 – Not found. The document you requested is not found.” Complainant argues that Respondent’s failure to make an active use of the disputed domain names is evidence that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). The Panel agrees and finds that Respondent’s failure to actively use the domain names at issue is evidence that Respondent lacks rights and legitimate interests in the domain names under Policy ¶ 4(a)(ii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to [UDRP] ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a contested domain name, so that circumstances falling outside the explicit parameters of that provision of the Policy can provide persuasive evidence for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Education Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the UDRP “indicates that its listing of bad faith factors is without limitation”) (emphasis in original); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the UDRP, is not conclusive that the domain name in issue was registered in and is being used in bad faith.”).
Further, Complainant argues that Respondent’s failure to connect the disputed domain names with active content is also evidence of Respondent’s bad faith registration and use. The Panel agrees and finds that Respondent’s failure to make an active use of the <clubmsn.us> and <microsoftphilanthropy.us> domain names is further evidence of bad faith registration and use of the domain names under Policy ¶ 4(a)(iii). See American Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the UDRP).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clubmsn.us> and <microsoftphilanthropy.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 19, 2011
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