Microsoft Corporation v. Fajri Gufran / Zainal
Claim Number: FA1610001697916
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Fajri Gufran / Zainal (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msnindonesia.com>, registered with CV. Rumahweb Indonesia.
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 Forum electronically on October 12, 2016; the Forum received payment on October 12, 2016. The Complaint was submitted in both Indonesian and English.
On October 14, 2016, CV. Rumahweb Indonesia confirmed by e-mail to the Forum that the <msnindonesia.com> domain name is registered with CV. Rumahweb Indonesia and that Respondent is the current registrant of the name. CV. Rumahweb Indonesia has verified that Respondent is bound by the CV. Rumahweb Indonesia 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 October 21, 2016, the Forum served the Indonesian Complaint and all Annexes, including an Indonesian Written Notice of the Complaint, setting a deadline of November 10, 2016 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@msnindonesia.com. Also on October 21, 2016, the Indonesian 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 made the following contentions.
Complainant is a leader in software, services and solutions. Complainant uses the MSN mark in connection with its business, and has engaged in continuous and widespread use of the mark since 1995. Complainant has registered the mark with numerous governmental authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,153,763 registered Apr. 28, 1998). See Compl., at Attached Ex. C. Respondent’s <msnindonesia.com> is confusingly similar to the MSN mark as the mark is incorporated entirely, with only the geographically descriptive term “Indonesia” added, along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <msnindonesia.com>. Respondent is not commonly known by <msnindonesia.com>, nor is it an authorized vendor, supplier, or distributor of Complainant’s goods and services. Further, while the landing page is used as a news site to attract visitors using the MSN mark, there is an appearance of affiliation. See Compl., at Attached Ex. D (resolving website for <msnindonesia.com>). While Complainant uses its own MSN site to provide news to users in Indonesia, the similarities in web layout is significant. See Compl., at Attached Ex. E (Complainant’s Indonesian offerings). Accordingly, Respondent’s use does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used the <msnindonesia.com> domain name in bad faith. Respondent’s use of the resolving website as a news site aimed at Indonesian users, there is a false impression created that it is associated with Complainant, and Respondent presumably profits from the confusion created. In addition, Respondent likely registered <msnindonesia.com> with actual knowledge because of the fame and familiarity associated with the MSN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMNARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Indonesian, thereby making the language of the proceedings in Indonesian. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Indonesian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Complainant is a famous United States company engaged in the provision of software, services and solutions and related goods and services.
2. Complainant has registered the MSN mark with numerous governmental authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,153,763 registered Apr. 28, 1998).
3. Respondent registered the <msnindonesia.com> domain name on March 22, 2016.
4. Respondent has used the domain name to resolve to a website the landing page of which is used as a news site to attract visitors but which gives the false appearance of an affiliation with Complainant.
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(f), 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 (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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant is a leader in software, services and solutions. Complainant uses the MSN mark in connection with its business, and has engaged in continuous and widespread use of the mark since 1995. Complainant submits that it has registered the mark with numerous governmental authorities, including the USPTO (e.g., Reg. No. 2,153,763 registered Apr. 28, 1998). See Compl., at Attached Ex. C. USPTO registrations serve as representations of Policy ¶ 4(a)(i) rights in a mark, regardless of a respondent’s country of origin. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Accordingly, the Panel finds that Complainant has rights in the MSN mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed<msnindonesia.com> domain name is identical or confusingly similar to Complainant’s MSN mark. Complainant contends that Respondent’s <msnindonesia.com> domain name is confusingly similar to the MSN mark as the mark is incorporated entirely, with only the geographically descriptive term “Indonesia” added, along with the “.com” gTLD. Similarly, in KEEN, Inc. v. Mohammad Reiva Mureza / PT. Keen Indonesia, the panel found that while the disputed domain name reproduced the complainant’s mark in its entirety, a hyphen, the term “Indonesia,” and “.com,” it was therefore “insufficient to prevent threshold Internet user confusion. D2015-1892 (WIPO Dec. 7, 2015). The Panel agrees that the changes in the instant case are similar to those in KEEN, Inc., and therefore there is confusing similarity under Policy ¶ 4(a)(i).
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 (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 (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 and has added the geographic identifier “indonesia” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the Indonesian business of Complainant;
(b) Respondent registered the disputed domain name on March 22, 2016;
(c) The domain name resolves to a website the landing page of which is used as a news site to attract visitors but which gives the false appearance of an affiliation with Complainant;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant argues that Respondent has no rights or legitimate interests in <msnindonesia.com>. Complainant submits that Respondent is not commonly known by <msnindonesia.com>, nor is it an authorized vendor, supplier, or distributor of Complainant’s goods and services. Notably, the WHOIS information lists “Fajri Gufran / Zainal” as registrant. Where there is no response, WHOIS information has been considered sufficient in finding for a complainant under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel finds that Complainant has succeeded under Policy ¶ 4(c)(ii);
(f) Further, while the landing page is used as a news site to attract visitors using the MSN mark, Complainant contends that there is an appearance of affiliation. See Compl., at Attached Ex. D (resolving website for <msnindonesia.com>). Complainant argues that it uses its own MSN site to provide news to users in Indonesia, the similarities in web layout are significant. See Compl., at Attached Ex. E (Complainant’s Indonesian offerings). Complainant cites the following cases where panels have found no rights or legitimate interests where respondents were engaging in passing off behavior: Microsoft Corp. v. dehghanibros/ milad dehghani, FA 1450188 (Forum Aug. 7, 2012) (finding the use of <microsoftiran.com> and <msnfarsi.com> for news related websites to violate the Policy as they were used in a manner to pass the sites off as emanating from Complainant); Microsoft Corp. v. Harold Martinez, FA 1607880 (Forum, Apr. 14, 2015) (finding Respondent’s use of <microsoftcolombia.com> as an attempt to pass itself off as Complainant in violation of Policy ¶ 4(c)(i) and ¶ 4(c)(iii), citing Microsoft Corp. v. li jiuliang, FA1300266 (Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website . . . 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)”). Accordingly, as the Panel agrees that Respondent has engaged in passing off behavior, the Panel finds that Respondent’s use does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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 argues that Respondent registered and used the <msnindonesia.com> domain name in bad faith. Complainant argues that as well Respondent’s use of the resolving website as a news site aimed at Indonesian users, there is also a false impression created by the site, namely that it is associated with Complainant, which it is not and, accordingly, that Respondent presumably profits from the confusion created through this “passing off” behavior. Compare Compl., at Attached Ex. D (Respondent’s <msnindonesia.com>), with Compl., at Attached Ex. E (Complainant’s MSN Indonesia site). Policy ¶ 4(b)(iv) has been found where passing off behavior has been present. See MidFirst Bank v. Smith, FA0907001274302 (Forum Aug. 31, 2009) (use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)). As the Panel agrees that Respondent has engaged in passing off behavior or has otherwise attracted Internet users for commercial gain, it finds Policy ¶ 4(b)(iv) bad faith registration and use.
Secondly, Complainant argues that Respondent likely registered <msnindonesia.com> with actual knowledge because of the fame and familiarity associated with the MSN mark. The MSN mark has been considered a famous mark. See Microsoft Corp. v. World Media Service, FA0903001254446 (Forum May 11, 2009) (“Complainant’s mark, MSN, is world famous”). Where a mark is famous, panels have found the registration and use of a domain name containing that mark leads to an inference of actual knowledge, and therefore bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <msnindonesia.com> domain name using the MSN mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it 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 <msnindonesia.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 16, 2016
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