Microsoft Corporation v. Smith Sylar
Claim Number: FA1109001406700
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Smith Sylar (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msnhome.org>, registered with GoDaddy.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2011; the National Arbitration Forum received payment on September 9, 2011.
On September 9, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <msnhome.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 September 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@msnhome.org. Also on September 12, 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 October 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
TRADEMARK/SERVICE MARK INFORMATION
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Microsoft is the owner of numerous proprietary trademarks for its goods and services, including the world famous trademark MSN®.
Microsoft began using the MSN trademark at least as early as 1995, and has used the trademark continuously since then. Among other things, Microsoft operates the MSN® portal which provides an Internet search engine, as well as news, e-mail, instant messaging, and other services. MSN and its companion sites Bing and Windows Live are among the most frequently visited sites on the Internet.
Prior ICANN panelists have found that MSN is a well-known and world famous mark. See, e.g., Microsoft Corp. v. World Media Service, FA0903001254446 (Nat. Arb. Forum May 11, 2009); Microsoft Corp. v. Cupcake City, WIPO Case No. D2000-0818 (2000); Microsoft Corp. v. Stop2Shop a/k/a Gene Vozzola, WIPO Case No. D2004-0510 (2004); Microsoft Corp. v. Marine Safety Network Weather, FA655480 (Nat. Arb. Forum April 26, 2006); Microsoft Corp. v. Daniel Kaufman, NAF Case No. FA0807001213955 (Nat. Arb. Forum 2008); and Microsoft Corp. v. Hakan Karabidek, DMD2010-0003 (WIPO October 28, 2010)(recognizing the “fame and substantial reputation in the [MSN] mark”).
Microsoft owns more than 40 United States registrations for MSN and related trademarks, and more than 200 registrations throughout the world. Microsoft used and internationally registered the trademark MSN long prior to the registration date for the disputed domain name. See also Microsoft Corp. v. Daniel Kaufman, FA0807001213955 (Nat. Arb. Forum 2008) (finding that Complainant’s MSN mark is known throughout the world and is registered with other governmental trademark authorities worldwide).
ICANN Rule 3(b)(viii).
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to Complainant’s famous MSN® trademark.
The disputed domain name incorporates MSN in its entirety, adding only the generic term “home” and the generic top-level domain “.org.” These added elements are insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s MSN mark, particularly where the term “home” is commonly used to identify a “home page,” and therefore relates directly to Complainant’s MSN business. See Microsoft Corp. v. Tan Kim Fong, FA0906001265720 (Nat. Arb. Forum July 14, 2009)(finding <msnhome.com> and <msnhomepage.com> confusingly similar to MSN and awarding transfer); Yahoo! Inc. v. Cupcakes et al., D2000-0777 (WIPO Oct. 2, 2000)(finding <yahoohome.com> confusingly similar to YAHOO and awarding transfer); Hewlett-Packard Dev. Co. L.P. v. Surya Tech. c/o Manoj Kumar Allakattu, FA0708001059665 (Nat. Arb. Forum Oct. 2, 2007)(finding <hpsoftware.com> confusingly similar to HP and noting that “addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”); and Abbott Labs. v. Whois Service c/o Belize Domain WHOIS Service, FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
The disputed domain name was plainly chosen by Respondent for its association with Complainant and is confusingly similar to the MSN mark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s famous MSN trademark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as Smith Sylar. Respondent is not commonly known by Complainant’s MSN trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s MSN trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain resolves to a page that promotes and links to third party products and services not offered by Complainant, including those of competitors such as Google. Presumably, these links generate compensation for Respondent or others. This is not a use in connection with 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 Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, January 10, 2007) (finding no legitimate interest where the domain name resolved to a website featuring links to third party websites); HP v. SZK.com a/k/a Michele Dinoia, FA635480 (Nat. Arb. Forum, March 7, 2006) (finding no legitimate interest where the domain name redirected to a generic search-engine website featuring links to services in competition with Complainant’s services); U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum, May 6, 2003) (Respondent’s use of Complainant’s mark and the goodwill surrounding the mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); TM Acquisition Corp. v. Sign Guards, FA132439 (Nat. Arb. Forum Dec. 31, 2002) (Respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003) (Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
To the extent Respondent argues that it is merely parking its domain, “one does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).” Nike, Inc. v. Fang Wei et al., FA0907001272458 (Nat. Arb. Forum August 21, 2009)(citations omitted). In fact, the failure to develop a site demonstrates a lack of genuine interest in the domain names. Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000). See also Sun Microsystems, Inc. v. Color Vivo Internet c/o David Carrero Fdez-Baillo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(noting that failure to make any active use of a domain name is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name); and HP v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s inactive use of a domain name that contains complainant’s mark is 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)).
Furthermore, Respondent is redirecting the sub-domain <music.msnhome.org> to Complainant’s MSN servers without authorization. The purpose for this redirection is unclear, however at least one third-party has determined that <msnhome.org> is used in connection with malware. This is not a legitimate use. See Google Inc. v. Vasea Petrovich, FA1008001339345 (Nat. Arb. Forum Sep 23, 2010)(“Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”);
For the above reasons, the Respondent has no rights or legitimate interests in the <msnhome.org> domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time Respondent registered the disputed domain name, Complainant’s MSN mark was well-known and famous. It is abundantly clear from the fact that Respondent is redirecting sub-domains to Complainant’s MSN servers that Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to create a false and misleading association with Complainant and its products and services.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Microsoft Corp. v. Cedric Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
The disputed domain name promotes and links to third parties not affiliated with Complainant, including sites belonging to Complainant’s competitors (such as Google). Presumably Respondent receives revenue from these links, and this is evidence of bad faith. See Nortel Networks v. BuyMeBuyMe (deriving revenue from links to competitors is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees’”); Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, January 10, 2007); (holding that respondent registered and used the domain name in bad faith by diverting computer users to a website featuring links to Complainant’s competitors); MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); and Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where 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 Complainant is the source of or is sponsoring the services offered at the site).
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's MSN trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s and third-party products and services. This constitutes bad faith under §4(b)(iv) of the Rules. See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004). Moreover, Respondent’s promotion of Complainant’s competitors disrupts Complainant’s business and falls under Policy ¶4(b)(iii). See Microsoft Corp. v. Richard Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011)(featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii)); and Instron Corp. v. Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006)(use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶4(b)(iii)).
To the extent Respondent argues that its domains are merely parked, such inactivity for nearly two years is also evidence of bad faith. Sun v. Color Vivo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(“in order to find bad faith registration and use pursuant to Policy ¶4(a)(iii) it is not necessary that Respondent have put the domain name to any active use … failure to make an active use of the disputed domain name can, in and of itself, be evidence of bad faith registration and use of the domain pursuant to Policy ¶4(a)(iii)”). See also Chrisma Productions, Inc. v. Thomas Quinn Jr., FA0905001263592 (Nat. Arb. Forum July 13, 2009)(finding that Respondent’s inactive use of the <harveykorman.com> domain name constituted bad faith registration and use under Policy ¶4(a)(iii)); 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 satisfied the requirement of ¶4(a)(iii) of the Policy); Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constituted bad faith registration and use); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith); and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Furthermore, the domain <msnhome.org>, through its strong association with Complainant’s famous MSN mark, provides an air of legitimacy which may fool consumers into authorizing malware communications through their firewalls. Use of Complainant’s trademark to create a likelihood confusion and perpetrate fraud on the public is further evidence of bad faith use and registration under the Policy. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith); and Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use where it fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Microsoft Corporation is a provider of many computer related goods and services, including its internet search engine, e-mail and instant messaging services that it offers under the MSN mark. Complainant owns numerous trademark registrations worldwide for its MSN mark, including those with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,153,763 registered April 28, 1998) and the Chinese State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,654,301 registered October 21, 2001).
Respondent Smith Sylar registered the <msnhome.org> domain name on October 23, 2009. Respondent’s disputed domain name resolves to a web page set up through the registrar which features a commercial search engine and various third-party links to competing and unrelated businesses and services.
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 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.
The Panel finds Complainant has established rights in its mark through its various trademark registrations around the world, including those with the USPTO (e.g., Reg. No. 2,153,763 registered April 28, 1998) and SAIC (e.g., Reg. No. 1,654,301 registered October 21, 2001). 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 Policy ¶4(a)(i).”); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s State Intellectual Property Office was sufficient to establish rights in the mark under Policy ¶4(a)(i)).
Further, Complainant argues Respondent’s <msnhome.org> domain name is confusingly similar to Complainant’s MSN mark. Complainant notes Respondent’s domain name contains its mark entirely while adding the generic term “home,” which its claims to be a descriptive term for the “home page” of a website. The Panel finds merely adding a generic or descriptive term and the generic top-level domain (“gTLD”) “.org” to a mark do not remove the domain name from the realm of confusing similarity under Policy ¶4(a)(i). See Am. 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 Policy ¶4(a)(i)); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent does not have any rights and legitimate interests in the <msnhome.org> domain name. Complainant is required to make 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 show it has rights or legitimate interests in the disputed domain name. 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 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.”). The Panel finds Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <msnhome.org> 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.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). Out of an abundance of caution, the Panel will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c).
Complaint argues Respondent is not commonly known by the <msnhome.org>domain name, and Complainant has not given Respondent permission to use Complainant’s mark. The WHOIS information identifies “smith sylar” as the registrant of the <msnhome.org> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii) because there is no evidence of Respondent being commonly known by the disputed domain name,. 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 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 names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues Respondent’s domain name resolves to a “page that promotes and links to third party products and services not offered by Complainant, including those of competitors such as Google.” After reviewing Complainant’s screen-shot evidence of such use, the Panel finds Respondent is not making a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends a portion of the third-party links on Respondent’s resolving website direct Internet users to Complainant’s competitors, such as Google, Inc. The Panel finds Respondent’s redirection of Internet users to Complainant’s competitors disrupts at least a portion of Complainant’s business and is evidence of bad faith registration and use under Policy ¶4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Further, Complainant argues Respondent presumably profits from its use of the disputed domain name as a links directory website. Complainant has shown the disputed domain name resolves to a website that features a search engine and several third-party links to competing and unrelated business entities. The Panel finds such use of a confusingly similar domain name is evidence of bad faith registration and use under Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Even more telling about Respondent’s bad faith is the subdomain music.msnhome.org. While forwarding a subdomain to another web site is not prima facie evidence of bad faith, doing so within a frame and trying to insert a Trojan into a visitor’s computer is certainly extraordinarily strong evidence of bad faith registration and use. The Panel would be hard pressed to find a legitimate reason for a domain owner to take such actions.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <msnhome.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: October 12, 2011
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