Microsoft Corporation v. John S. Dalton
Claim Number: FA0607000747780
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225. Respondent is John S. Dalton (“Respondent”), Box 245, Vienna, AT 1130, at.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <searchmsn.com>, registered with Bizcn.com, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 13, 2006.
On July 13, 2006, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <searchmsn.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 7, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@searchmsn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2006 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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." 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:
1. Respondent’s <searchmsn.com> domain name is confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <searchmsn.com> domain name.
3. Respondent registered and used the <searchmsn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, operates one of the top three search engines in the world. Complainant has continuously used the MSN mark since 1995 in connection with its Internet search portal and a news and information website, located at the <msn.com> and <msnsearch.com> domain names.
Complainant holds trademark registrations for the MSN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,191,998 issued November 17, 2003; Reg. No. 2,201,105 issued January 24, 2004; Reg. No. 2,498,608 issued October 16, 2001) and in the European Community (Reg. No. 1,489,103 issued June 6, 2001; Reg. No. 2,375,988 issued October 9, 2002; Reg. No. 1,488,857 issued March 27, 2001).
Respondent registered the <searchmsn.com> domain name on April 21, 2004. Respondent is using the <searchmsn.com> domain name to operate a web directory with links to pornography and adult-oriented content.
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 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.
Complainant has established rights in the MSN mark through registration of the mark in the European Community, where Respondent resides, as well as with numerous other trademark authorities around the world. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s <searchmsn.com> domain name is confusingly similar to Complainant’s MSN mark because the disputed domain name incorporates the MSN mark in its entirety and merely adds the term “search,” which is also found in one of Complainant’s domain names, <msnsearch.com>. The Panel finds that the mere addition of a term describing Complainant’s business does nothing to differentiate the disputed domain name from Complainant’s registered MSN mark and therefore, Respondent’s <searchmsn.com> domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent lacks rights and
legitimate interests in the <searchmsn.com> domain name. Complainant must first make a prima facie
case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name, it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <searchmsn.com>
domain name. See 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); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “John
S. Dalton,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <searchmsn.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <searchmsn.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335
(Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly
known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Furthermore, Respondent’s <searchmsn.com> domain name resolves to a web directory displaying links to adult-oriented content. In Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel found that respondent’s diversionary use of the <isleworthcountryclub.com> website to misdirect Internet users seeking the complainant’s ISLEWORTH mark to adult-oriented websites 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). Because Respondent is also diverting Internet users to websites displaying adult-oriented content, Respondent’s use of the disputed domain name does not represent 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 Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <searchmsn.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the
disputed domain name includes Complainant’s MSN mark and resolves to a website
with links to adult-oriented content.
The Panel infers that Respondent receives click-through fees for each
consumer it diverts to these third-party websites. Therefore, Respondent is taking advantage of the confusing
similarity between Complainant’s MSN mark and the domain name and profiting
from the goodwill associated with the mark.
Respondent’s diversionary use of the disputed domain name for its own
commercial gain provides evidence of bad faith registration and use under
Policy ¶ 4(b)(iv). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO
June 27, 2000) (finding that absent contrary evidence, linking the domain names
in question to graphic, adult-oriented websites is evidence of bad faith); see
also Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by
E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that
pornographers rely on misleading domain names to attract users by confusion, in
order to generate revenue from click-through advertising, mouse-trapping, and
other pernicious online marketing techniques.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <searchmsn.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 23, 2006
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