Microsoft Corporation v. Laurent Sabbah
Claim Number: FA1107001399315
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Laurent Sabbah (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newmsnmessenger.com>, registered with 1 & 1 Internet AG.
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.
Honorable Paul A. Dorf (Ret.)as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2011; the National Arbitration Forum received payment on July 19, 2011.
On July 21, 2011, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <newmsnmessenger.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2011 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@newmsnmessenger.com. Also on July 21, 2011, 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 August 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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, 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 <newmsnmessenger.com> domain name is confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <newmsnmessenger.com> domain name.
3. Respondent registered and used the <newmsnmessenger.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a global provider of computer software and services. Complainant owns a large portfolio of trademark registrations for the MSN mark, not only registering it with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,043,002 registered March 11, 1997), but also with governmental trademark authorities throughout the world, such as the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 471,196 registered February 18, 1998). Complainant labels many of its web-based messenger products and communications services, as well as one of its primary websites, with the MSN mark.
Respondent, Laurent Sabbah, registered the disputed domain name on July 8, 2009. The disputed domain name resolves to a website the mimics Complainant’s own website in an attempt to pass itself off as Complainant. The website includes Complainant’s logos, as well as other product names associated with Complainant’s own software. From the website, Internet users are able to download what Respondent identifies as a “Free Microsoft Software.” In fact, Internet users are downloading a different program containing a virus that subjects users to pop-up ads and other adware.
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.
Under Policy ¶ 4(a)(i), Complainant is required to establish its rights in the MSN mark to be successful on its claim. Complainant claims that it has done so by registering that mark with the USPTO and CIPO. Previous panels have determined that registering a mark with federal/governmental trademark authorities confers upon the registrant affirmative rights in said mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Based upon Complainant trademark registrations with the USPTO (e.g., Reg. No. 2,043,002 registered March 11, 1997) and CIPO (e.g., Reg. No. 471,196 registered February 18, 1998), the Panel finds that Complainant has established its rights in the MSN mark under Policy ¶ 4(a)(i) by registering the mark with federal trademark authorities.
Complainant argues that Respondent’s <newmsnmessenger.com> domain name is confusingly similar to its MSN mark. The disputed domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com,” the generic term “new,” and a term descriptive of Complainant’s product offerings under the MSN mark, “messenger.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s MSN mark under Policy ¶ 4(a)(i) because the changes made do not sufficiently differentiate one from the other. See 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.”); see also Am. Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing similarity where “[t]he domain name includes Complainant’s mark with the addition of the descriptive word “hot,” which does not dispel any confusion arising from the inclusion of Complainant’s mark in the domain name.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has made a prima facie case indicating that Respondent lacks rights or legitimate interests in the disputed domain name. Due to that finding, the burden of proof now shifts to Respondent to rebut Complainant’s prima facie case. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent has not only failed to rebut Complainant’s prima facie case in this matter, it has also failed to offer any type of Response which allows the Panel to assume it lacks rights or legitimate interests in the disputed domain name. See 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.”). However, the Panel will still examine the entire record before making such a determination regarding Respondent’s rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information appears to support Complainant’s contention as it identifies the registrant of the disputed domain name as “Laurent Sabbah.” Respondent has not offered any evidence to support a finding that it is commonly known by the disputed domain name. Based upon the WHOIS information and the lack of evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). 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 Policy ¶ 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 also contends that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Respondent resolves the disputed domain name to a website which is apparently attempting to pass itself off as Complainant’s own legitimate site. The website prominently displays Complainant’s logos, along with other terms associated with Complainant’s business, “windows” for example. Internet users may also download what Respondent labels as “Free Microsoft Software,” which actually ends up being a different adware virus intended to subject the downloader to multiple pop-up ads. The Panel finds that such use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant claims that Respondent has registered and used the disputed domain name in bad faith. Respondent’s disputed domain name resolves to a site which appears to Complainant’s own website, displaying Complainant’s logos and even offering a download labeled “Free Microsoft Software.” It appears as though Respondent is attempting to pass itself off as Complainant to induce Internet users into downloading what turns out to be an adware program subjecting the unsuspecting downloader to pop-up advertisements. The Panel infers that Respondent generates revenue by selling pop-up ad space. The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) with full knowledge of Complainant’s rights in the MSN mark. See 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.”); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newmsnmessenger.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 26, 2011
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