Microsoft Corporation v. Liang Sun a/k/a L.A.Times c/o Down Sun
Claim Number: FA1109001407311
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Liang Sun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <msnlite.net> and <msnlite.info>, registered with GoDaddy.com, Inc. and <msnlite.org>, registered with eNom, 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.
Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2011; the National Arbitration Forum received payment on September 14, 2011.
On September 14, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <msnlite.info> and <msnlite.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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”).
Also on September 14, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <msnlite.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@msnlite.net, postmaster@msnlite.org, and postmaster@msnlite.info. Also on September 15, 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.
Respondent requested additional time to respond to the Complaint and was granted an extension until October 25, 2011.
A timely Response was received and determined to be complete on October 24, 2011.
On October 28, 2011 an Additional Submission was received from Complainant and determined to be compliant with Supplemental Rule 7.
On November 1, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the holder of a famous trademark, MSN, registered in the United States and in various other countries throughout the world. Complainant also contends that it owns an attendant MSN Messenger Logo that is similarly well known and comparably registered. Complainant asserts that the disputed domain names are confusingly similar to its famous MSN mark and that the domain names were chosen by Respondent for their association with the Complainant.
Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the domain names, or by Complainant’s MSN mark, and is not authorized to use Complainant’s MSN mark. Complainant further contends that Respondent has not used the disputed domain names in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use.
Complainant notes that Respondent’s websites offer competing messaging software that specifically references MSN and displays an imitation of Complainant’s MSN Messenger Logo. Complainant contends that Respondent registered the disputed domain names with knowledge of Complainant’s rights, and intended to create a false and misleading association with Complainant’s goods and services. Complainant argues that Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is evidence of bad faith registration and use.
B. Respondent
Respondent contends that while “.org”, “.net”, and “.info” are top-level domains and generic terms, that is not true for “lite” because the latter is not a standard or even correctly spelled word. Respondent asserts, “The use of this term is distinctive and, thus, makes the Domain Names in Dispute distinguishable from the Complainant’s MSN products.”
Respondent also claims the Complainant failed to provide evidence that the term lite was used to identify a feature-limited version of a software program and that MSNLite is a feature limited version of MSN. Respondent contends that based on the “three reasons above” MSNLite is not identical or confusingly similar to MSN. Respondent additionally makes an effort to contend that he has acquired secondary meaning in MSNLite.
Respondent further argues that the circumstances present “The Unlikelihood of Confusion” as well as “Good Faith Registration”. Respondent states that it registered the disputed domain names “because it owns, operates and develops a product called MSNLite. The name of MSNLite is distinctively different from MSN. Therefore, we have a legitimate interest in the Domain Name in Dispute, and our registration is not aimed to prevent Complainant from registration proper domain names for its own products or services.” Respondent contends that it is Complainant’s competitor and that the disputed domains were established to market and provide its product rather than to disrupt the business of the Complainant.
C. Additional Submissions
Complainant’s additional submission notes Respondent’s admission that it is a competitor using the disputed domain names for its product MSNLite to market software that competes with Complainant’s MSN Messenger and that Respondent is not merely using Complainant’s mark to compare products but has used Complainant’s mark to name its product. Complainant also disputes the Respondent’s characterization of the word “lite” as distinctive and instead asserts that it is a common description that is incapable of distinguishing the disputed domain name from Complainant’s mark.
Complainant, Microsoft Corporation, is a worldwide leader in software development that has been using the MSN trademark at least as early as 1995 and continuously since that time. MSN has been recognized as a well-known and world famous mark. Microsoft owns more than 40 United States (U.S.) registrations for MSN and related trademarks and more than 200 registrations throughout the world. Complainant’s global registrations include China where Respondent purportedly resides. Microsoft has used its MSN Messenger Logo since at least as early as 1997 and has continued to do so since that time. The logo is also registered in the U.S. and throughout the world.
Respondent appears to be an individual or entity located in Beijing, China. Respondent admits that it is a competitor of Complainant in developing and marketing software design and products. Respondent’s contentions regarding the distinctiveness of the word ”lite” are misplaced as that word’s use within the American lexicon is commonly construed as a generic misspelling of the word “light” that conveys the same meaning and therefore lacks distinctiveness. Respondent’s partial assertion to any secondary meaning that it may have developed in the word “lite” in connection with the disputed domain names was not supported by evidence of any type, and thus the Panel finds that Respondent cannot claim any rights to the use of the name on that basis.
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."
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
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.” Complainant contends that the WHOIS information lists Liang Sun a/k/a L.A.Times c/o Down Sun as the organization or the registrant for the disputed domain names. Complainant claims that the <msnlite.net>, <msnlite.org>, and <msnlite.info> domain names all resolve to the same website, <msnlite.org>. Finally, Complainant argues that all the disputed domain names contain Complainant’s MSN mark.
The Panel finds that the Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity. As a result, the Panel chooses to proceed with the current case.
Complainant alleges that it has rights in the MSN mark because of its numerous trademark registrations around the world, such as those with the Chinese State Administration for Industry and Commerce (“SAIC”), the United States Patent and Trademark Office (“USPTO”), and the Canadian Intellectual Property Office (“CIPO”). The registrations include the following;
SAIC
Reg. No. 1,654,301 registered October 21, 2001;
Reg. No. 1,723,706 registered February 28, 2002;
Reg. No. 1,735,799 registered March 21, 2002;
Reg. No. 1,948,777 registered August 21, 2002;
Reg. No. 1,951,980 registered August 21, 2002;
Reg. No. 1,952,811 registered August 21, 2002;
Reg. No. 1,955,565 registered August 21, 2002;
USPTO
Reg. No. 2,153,763 registered April 28, 1998;
Reg. No. 2,191,997 registered September 29, 1998;
Reg. No.2,191,998 registered September 29, 1998;
Reg. No. 2,201,105 registered November 3, 1998;
Reg. No. 2,342,096 registered April 18, 2000;
CIPO
Reg. No. 559,054 registered March 12, 2002;
Reg. No. 627,227 registered December 1, 2004; &
Reg. No. TMA711,854 registered April 14, 2008.
The Panel finds that the Complainant has adequately demonstrated rights in the MSN mark for the purposes of Policy ¶ 4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010), (registration with China’s SAIC established rights), see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), (trademark registration with the USPTO established rights).
Complainant contends that Respondent’s <msnlite.org>, <msnlite.net>, and <msnlite.info> domain names are confusingly similar to Complainant’s MSN mark because all three disputed domain names combine Complainant’s mark with the generic term “lite” and the generic top-level domain (“gTLD”) “.org,” “.net,” or “.info.” Prior cases have established that the presence of a generic word in a domain name consisting primarily of another’s mark does not remove the disputed domain name from the realm of confusing similarity with the mark. The Panel finds that Respondent’s <msnlite.org>, <msnlite.net>, and <msnlite.info> domain names are confusingly similar to Complainant’s MSN mark pursuant 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 Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark).
Complainant has proven this element.
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that the burden shifted to Respondent to show it does have rights or legitimate interests. See 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).
Complainant asserts that Respondent is not commonly known by the disputed domain names. Complainant alleges that the WHOIS information identifies the registrant of the disputed domain names as “Liang Sun a/k/a L.A.Times c/o Down Sun.” Complainant also states that Respondent is not affiliated with Complainant in any way and that Respondent is not licensed to use Complainant’s mark. Complainant notes that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Respondent does not dispute any of these assertions or contentions but instead admits that it is a competitor of Complainant using Complainant’s mark to get customers to switch to its products and services. Based on the foregoing the Panel concludes that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii) as it is not commonly known by the disputed domain names. 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 names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant also responds to Respondent’s assertion that it uses Complainant’s mark to “present a user-interface consistent with that under MSN Messenger so as to minimize the time and energy MSNLite users need for transition.” Complainant notes that there is no legal principle that permits copying of logos to make users more comfortable with a competing product. Complainant further responds to Respondent’s assertion that MSNLite is a fair use of the MSN mark because MSNLite is an alternative to MSN. Complainant notes that Respondent is not using the MSN mark merely to reference Complainant’s product for comparison but is using the MSN mark to name Respondent’s competing product. Based on these arguments, the Panel finds that Respondent has not shown a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as it is advertising and offering competing products under Complainant’s mark. See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also 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.”).
Complainant has proven this element.
Complainant contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the MSN mark. Respondent does not dispute Complainant’s contentions regarding the fame of its mark or the awareness of Complainant’s business. Respondent further admits that it is trying to get customers to switch from using Complainant’s products to Respondents. Although constructive notice, based on the registration of trademarks, is recognized in some jurisdictions, it has not generally been held to suffice for a finding of bad faith registration and use under the UDRP. However, since the Complainant is known as the global leader in its field and the Respondent is operating in the same field by trying to attract Complainant’s customers through the offer of products that incorporate Complainant’s registered MSN trademark, the Panel finds that Respondent had actual notice of Complainant’s trademark. Thus, the Panel finds that Respondent registered, and is using, the disputed domain name in bad faith under Policy ¶ 4(a)(iii. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant argues that Respondent uses the disputed domain name to promote and offer a competing messaging service called “MSNLite.” Further, Complainant asserts that Respondent specifically describes this service as an alternative to Complainant’s messaging product and admits that it is using the disputed domain names to market software that competes with Complainant. The Panel finds that Respondent’s actions and admissions demonstrate that Respondent is a competitor of Complainant. Complainant contends in its Complaint and Additional Submission that Respondent’s actions deprive Complainant of revenue by diverting consumers and disrupting Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name to compete with Complainant while misappropriating Complainant’s mark illustrates Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent’s disputed domain names, which contain Complainant’s MSN mark, attract consumers by misleadingly diverting them to Respondent’s website when they are actually seeking Complainant’s website. Complainant alleges that the use of the mark in the disputed domain names, the display of the imitation mark and logo on the resolving website, and the offer of very similar products creates a likelihood of confusion and misleads consumers as to the authenticity of Respondent’s website and products. The Panel concludes that Respondent’s attempt to use Complainant’s mark to attract, confuse and profit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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).”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that the Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <msnlite.net>, <msnlite.org>, and <msnlite.info> domain names be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Esq. Panelist
Dated: November 15, 2011
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