Microsoft Corporation v. MSN Content Plus Inc a/k/a Content Plus, MSN
Claim Number: FA0608000781832
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 MSN Content Plus Inc a/k/a Content Plus, MSN (“Respondent”), Room 1806, International Institute Building, South 10 Road, University Park, Pasadena, CA 91125.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <msncontentplus.com>, registered with Go Daddy Software, Inc., and <msncontentplus.net>, registered with Omnis Network, Llc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 22, 2006.
On August 22, 2006, Go Daddy Software, Inc., confirmed by e-mail to the National Arbitration Forum that the <msncontentplus.com> domain name is registered with Go Daddy Software, Inc., and that Respondent is the current registrant of the name. Go Daddy Software, Inc., has verified that Respondent is bound by the Go Daddy Software, 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 August 23, 2006, Omnis Network, Llc confirmed by e-mail to the National Arbitration Forum that the <msncontentplus.net> domain name is registered with Omnis Network, Llc and that Respondent is the current registrant of the name. Omnis Network, Llc has verified that Respondent is bound by the Omnis Network, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On August 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 12, 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@msncontentplus.com and postmaster@msncontentplus.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <msncontentplus.com> and <msncontentplus.net> domain names are confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <msncontentplus.com> and <msncontentplus.net> domain names.
3. Respondent registered and used the <msncontentplus.com> and <msncontentplus.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured,
marketed, and sold computer software and related products and services since
1975. As part of Complainant’s
provision of Internet services, Complainant offers a news and information
network known as the “Microsoft Network,” or “MSN.” Complainant begain using the MSN mark as early as 1995, and
Complainant is currently the holder of approximately forty trademark
registrations with the United States Patent and Trademark Office (“USPTO”)
(e.g., Reg. No. 2,191,997 issued September 29, 1998) for the MSN mark. In connection with its business, Complainant
also holds the domain name registrations for the <msn.com> and
<msn.net> domain names, through which Complainant operates a website
offering Internet consumers online services, including MSN Search services, MSN
Chat, e-mail services, and MSN Web Messenger instant messaging services.
Respondent, MSN Content Plus Inc a/k/a Content Plus, MSN, registered the <msncontentplus.com> domain name on April 29, 2005, and the <msncontentplus.net> domain name on June 8, 2005. Respondent’s disputed domain names resolve to commercial websites offering downloadable software specifically for use with Complainant’s MSN messenger services.
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 asserts and provides evidence of numerous federal trademark registrations with the USPTO for the MSN mark. The Panel finds that Complainant’s registration of the mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
Furthermore, the Panel finds that Respondent’s <msncontentplus.com> and <msncontentplus.net> domain names are confusingly similar to Complainant’s registered MSN mark. Specifically, the Panel finds that the disputed domain names incorporate Complainant’s registered MSN mark in its entirety, with the addition of the generic or descriptive terms, “content” and “plus,” and either the generic top-level domain (“gTLD”) “.com” or “.net.” Previous panels have held that similar alterations to a mark do not negate the confusing similarity created between the mark and the disputed domain name pursuant to Policy ¶ 4(a)(i). In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), the panel determined that the <novellsolutions.com> domain name was confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions,” because even though “the word ‘solutions’ was descriptive when used for software, Respondent used this word paired with Complainant's trademark NOVELL.” See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Additionally, the panel in Valeant Pharms. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005), concluded that the addition of the gTLD “.com” to the complainant’s CESAMET mark did not sufficiently distinguish the <cesamet.com> domain name from the mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel in the instant case finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant initially bears the burden of establishing that Respondent lacks rights or legitimate interests with respect to the disputed domain names. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain names under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has sufficiently established a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain names under Policy ¶ 4(c).
Respondent’s disputed domain names both resolve to commercial websites offering downloadable software specifically for use with Complainant’s MSN messenger services. Consequently, the Panel finds that Respondent’s use of the <msncontentplus.com> and <msncontentplus.net> domain names constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website).
The Panel finds that the evidence on record fails to demonstrate that Respondent is commonly known by the <msncontentplus.com> and <msncontentplus.net> domain names pursuant to Policy ¶ 4(c)(ii). Complainant avers that Respondent is not affiliated with Complainant, and is not licensed or otherwise authorized by Complainant to use the MSN mark. Additionally, Complainant alleges and submits evidence indicating that Respondent’s WHOIS information is false based upon Complainant’s inability to locate any business in Respondent’s state of residence operating under the name provided in Respondent’s WHOIS information. Therefore, the Panel finds that Respondent is not commonly known by the <msncontentplus.com> and <msncontentplus.net> domain names under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s <msncontentplus.com> and <msncontentplus.net> domain names resolve to commercial websites offering downloadable software specifically for use with Complainant’s MSN messenger services. As a result, the Panel finds that Respondent utilized the disputed domain names in order to trade off of the goodwill associated with Complainant’s registered MSN mark, and for Respondent’s commercial benefit. Therefore, the Panel concludes that Respondent registered and used the <msncontentplus.com> and <msncontentplus.net> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Moreover, in light of Respondent’s use of the <msncontentplus.com> and <msncontentplus.net> domain names to operate commercial websites offering products unrelated to those offered by Complainant, the Panel finds that Respondent registered and used the disputed domain names with the intent to disrupt Complainant’s business. Thus, the Panel concludes that such use by Respondent demonstrates registration and use of the <msncontentplus.com> and <msncontentplus.net> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msncontentplus.com> and <msncontentplus.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: October 2, 2006
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