Microsoft Corporation v. Ricardo Luz Pettini / Pf69.c0m
Claim Number: FA1401001540564
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Ricardo Luz Pettini / Pf69.c0m (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <liveonmsn.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2014; the National Arbitration Forum received payment on January 24, 2014.
On January 24, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <liveonmsn.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@liveonmsn.com. Also on January 27, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant operates a web portal that provides an Internet search engine, news, e-mail, travel information, and other services. Complainant uses the trademark MSN in connection with this portal, and has used the mark continuously since at least 1995. The MSN mark is registered in the United States and elsewhere around the world. Complainant claims that MSN is a well-known and world famous mark, and that its MSN portal is among the most frequently visited sites on the Internet.
Complainant contends that the disputed domain name, <liveonmsn.com>, is confusingly similar to its MSN mark. Complainant notes that the phrase “live on” relates to its own business, in that Complainant offers video streaming services that can be streamed “live on” a website, and asserts that the incorporation of this phrase in the disputed domain name contributes to the confusing similarly between the domain name and Complainant’s mark.
Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by nor licensed to use the MSN mark, and that Respondent has not used the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The domain name currently redirects to a commercial web page entitled “Live on MSN offers free live adult webcam chat and live sex webcams!” and containing adult-oriented material. Complainant alleges that the use of a domain name that is confusingly similar to Complainant’s mark in this manner is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. In further support thereof, Complainant cites evidence that its MSN mark was famous around the world prior to the registration of the domain name in 2007. Complainant alleges that Respondent registered the domain name with knowledge of Complainant’s mark and an intent to attract traffic for his adult website by way of confusion with the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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.
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.”).
The disputed domain name combines Complainant’s famous trademark with the phrase “live on” and the top-level domain suffix “.com”. These additions do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., Viacom International Inc. v. Transure Enterprise Ltd., D2009-1616 (WIPO Jan. 20, 2010) (finding <nickjrlive.com> confusingly similar to NICK JR.); Twentieth Century Fox Film Corp. v. Domains by Proxy, Inc./Samina Rahman, D2009-1121 (WIPO Oct. 6, 2009) (finding <livefoxsports.info> confusingly similar to FOX SPORTS). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and apparently its sole use has been in connection with a website that contains and links to unrelated adult-oriented content. See Microsoft Corp. v. Van de Morton / CASH TELECOM SA, FA 1518222 (Nat. Arb. Forum Oct. 14, 2013) (finding lack of rights or legitimate interests in similar circumstances). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent’s registration of a domain name incorporating Complainant’s well-known mark and the use of that domain name to display and link to unrelated adult-oriented content are indicative of bad faith under paragraph 4(b)(iv). See Microsoft Corp. v. Van de Morton, supra. The Panel so finds.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <liveonmsn.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 28, 2014
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