Microsoft Corporation v. IWD / Gary Westfall
Claim Number: FA1211001471175
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is IWD / Gary Westfall (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msnnews.net>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2012; the National Arbitration Forum received payment on November 14, 2012.
On November 14, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <msnnews.net> 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 November 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2012 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@msnnews.net. Also on November 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on December 6, 2012.
Complainant submitted an Additional Submission on December 7, 2012, which was deemed to be compliant.
On December 20, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following allegations:
1. Complainant’s business was founded in 1975 as a software services company, and Complainant began using its MSN trademark in 1995. Complainant operates the MSN portal, providing news and other services. Complainant’s MSN website and its companion websites, Windows Live and Bing, have substantial numbers of Internet visitors.
2. Complainant owns trademark registrations with government trademark authorities throughout the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,153,763 registered April 28, 1998), as well as the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 559,054 registered February 7, 2000), and the Intellectual Property Office of New Zealand (“IPONZ”) (e.g., Reg. No. 607,763 registered February 4, 2000). See Complainant’s Exhibit D.
3. Respondent registered the <msnnews.net> domain name, which is confusingly similar to Complainant’s MSN mark as it only adds the term “news” and the generic top-level domain (“gTLD”) “.net” to the mark.
4. Respondent fails to demonstrate rights or legitimate interests in the domain name because Respondent is not commonly known by the <msnnews.net> domain name, nor does it use the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The WHOIS information identifies the registrant as “IWD/Gary Westfall,” and Respondent is not affiliated with Complainant or licensed to use Complainant’s mark.
5. Complainant uses the domain name to host a website that features purported news articles surrounded by advertising, which essentially amounts to Respondent offering services competing with Complainant’s news services under the same name, MSN News. Respondent exploits Complainant’s MSN mark to pass itself off as Complainant and to make a commercial gain through its “pay-per-click” advertising.
6. Respondent registered and uses the <msnnews.net> domain name in bad faith and with knowledge of Complainant’s rights in the mark. Respondent’s competing use of the domain name disrupts Complainant’s business and Respondent’s attempt to benefit commercially from the goodwill associated with Complainant’s mark and pass itself off as Complainant shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv),
B. Respondent
Respondent made the following contentions.
1.The <msnnews.net> domain name is eight years old and could not be confused with any other mark, and there are more than 35,000 domains that start with “msn.”
2. Many other domain names are available that end in other top-level domains, such as “.info,” “.us,” and “.biz.”
3. Respondent alleges that the resolving website has fewer than thirty views a day.
C. Additional Submissions
1.
Complainant makes the following allegations in its Additional Submission:
Respondent’s contention that the <msnnews.net> domain name is eight years old is untrue, as the
registration was created on November 18, 2010. See Complainant’s
Additional Submission Exhibit 1.
2. Respondent cannot make a claim of good faith based on previous owner’s registrations.
3. Respondent offered to sell the domain name to Complainant for $8,000, which constitutes an offer to sell in excess of the cost associated with registration fees and demonstrates bad faith registration and use.
4. Respondent’s claim that the <msnnews.net> domain name cannot be confused with the MSN mark is incorrect. Respondent’s argument that over 35,000 domain names start with “msn” is not a defense under the Policy.
1. Complainant is a United States company that is worldwide leader in computer software, services and solutions in many areas of industry and commerce including news services. Microsoft uses and has registered various well-known marks in conjunction with its business, including MSN.
2. Complainant owns trademark registrations with government trademark authorities throughout the world for its MSN mark, including with the USPTO (e.g., Reg. No. 2,153,763 registered April 28, 1998), as well as the CIPO (e.g., Reg. No. 559,054 registered February 7, 2000), and the IPONZ (e.g., Reg. No. 607,763 registered February 4, 2000) . See Complainant’s Exhibit D.
3. Respondent registered the <msnnews.net> domain name on November 17, 2010 and uses it to maintain a website offering news articles and third-party advertising, which directly competes with Complainant’s news services under the same name.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant alleges that its multiple trademark registrations grant Complainant rights in the MSN mark under the Policy. The Panel notes that Complainant submits evidence of numerous trademark registrations, including registrations with the USPTO (e.g., Reg. No. 2,153,763 registered April 28, 1998), CIPO (e.g., Reg. No. 559,054 registered February 7, 2000), and IPONZ (e.g., Reg. No. 607,763 registered February 4, 2000). The panel in Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), stated that multiple trademark registrations for the HONEYWELL mark throughout the world demonstrates the complainant’s rights in the mark. The Panel therefore concludes that Respondent adequately demonstrates its rights in the MSN mark pursuant to Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MSN mark. Complainant argues that the <msnnews.net> domain name is confusingly similar to Complainant’s MSN mark due to the generic term “news” in the domain name and the generic top-level domain (“gTLD”) “.net.” The Panel determines that by using Complainant’s MSN mark and adding the term “news” and the gTLD “.net,” the <msnnews.net> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). That is so because the objective internet user would naturally conclude that the domain name related to a new service being provided by Complainant’s MSN business. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MSN mark and to use it in its domain name, adding only the generic word “news” , thus implying that the domain name is an official domain name of Complainant leading to an official website of Complainant on which news services are provided;
(b) Respondent has then used the domain name to display news services under the Complainant’s mark;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant alleges that Respondent is not commonly known by the <msnnews.net> domain name because the WHOIS information reveals the registrant to be “IWD / Gary Westfall.” See Complainant’s Exhibit A. Further, Complainant asserts that it has not authorized Respondent’s use of the MSN mark in a domain name. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), stated that the respondent was not commonly known by the disputed domain name, considering that the WHOIS information did not support such a finding and that the complainant did not authorize the respondent to register a domain name using its registered mark. The Panel similarly concludes that Respondent is not commonly known by the <msnnews.net> domain name based on the WHOIS information and Respondent’s lack of permission to use the MSN mark and therefore finds that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
(e) Complainant contends that Respondent uses the <msnnews.net> domain name to maintain a website offering news articles and third-party advertising, which Complainant argues directly competes with Complainant’s news services under the same name. Complainant asserts that Respondent’s activities do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel finds that because Respondent offers a news service that competes with Complainant’s online news service, along with third-party advertising, Respondent fails to use the <msnnews.net> domain name to make 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 Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”).
(f) Complainant also alleges that by using the MSN mark as its own, Respondent attempts to pass itself off as Complainant, which Complainant argues is not a legitimate use of the disputed domain name. The panel in Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007), held that the respondent attempted to pass itself off as the complainant for presumable financial gain, which was not a use of the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the domain name to display news services under the Complainant’s mark demonstrates Respondent’s attempt to pass itself off as Complainant and may conclude that Respondent therefore fails to demonstrate 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges in its Additional Submission that Respondent attempted to sell the <msnnews.net> domain name for a sum of $8,000, and argues that the asking price far exceeds reasonable registration expenses, which is evidence of Respondent’s bad faith registration and use. The Panel determines that Respondent’s request for $8,000 in exchange for the disputed domain name is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Secondly, Complainant argues that Respondent uses the domain name to offer competing news services, which is disruptive to Complainant’s business offering similar news services. In Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006), the panel held that the respondent’s registration and use of the disputed domain name was intended to disrupt the complainant’s business under the complainant’s mark because the respondent maintained a website in direct competition with the complainant. The Panel determines that Respondent’s registration and use of the <msnnews.net> domain name is in bad faith under Policy ¶ 4(b)(iii) because Respondent operates a website in competition with Complainant’s services, using Complainant’s MSN mark.
Thirdly, Complainant makes the assertion that Respondent attempts to reap a commercial benefit by taking advantage of the goodwill associated with Complainant’s MSN trademark and diverting Internet traffic from Complainant’s website. The Panel concludes that Respondent’s diversionary conduct in order to make a financial gain is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Fourthly, Complainant argues that Respondent’s effort to pass itself off as Complainant by using the MSN mark and offering a news service at the resolving website constitutes registration and use in bad faith. In Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002), the panel stated that the respondent’s use of the domain name to resolve to a website that displayed the complainant’s trademark, and with the respondent’s knowledge of the complainant’s mark, demonstrated the respondent’s bad faith registration and use. The Panel concludes that by using Complainant’s mark at a website that offers competing services, Respondent attempted to pass itself off as Complainant which is evidence of registration and use in bad faith of the <msnnews.net> domain name under Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MSN mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msnnews.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 21, 2012
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