Microsoft Corporation v.
Area Auto Corp
Claim Number: FA0709001075532
PARTIES
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msnrealestate.com>, registered with Wild West
Domains, Inc.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 10, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 11, 2007.
On September 10, 2007, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <msnrealestate.com> domain name is
registered with Wild West Domains, Inc.
and that the Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 September 14, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 4, 2007 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@msnrealestate.com by
e-mail.
A timely Response was received and determined to be complete on October 3, 2007.
A timely Additional Submission was submitted by Complainant and
determined to be complete on October 8, 2007.
On October 11, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed John J. Upchurch as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The
domain name <msnrealestate.com>
is confusingly similar to Complainant’s famous MSN mark.
2.
Respondent has no rights or legitimate interests in the <msnrealestate.com> domain name.
3. The
domain name was registered and used in bad faith.
B. Respondent
1. <msnrealestate.com>
stands for “mortgage service and real estate.”
2. Microsoft does not own MSN.
3. There has been no bad faith.
C. Additional Submissions
1.
Nowhere on Respondent’s website is the term “mortgage service and real
estate” used.
2. All
Google sites listed in response to “MSN real estate” relate to Complainant’s
site.
3.
Respondent did not reply to accusations of registration and use in bad
faith implying guilt.
FINDINGS
The Panel finds for the Complainant and
orders the website <msnrealestate.com>
be transferred to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 rights in the
MSN mark under Policy ¶ 4(a)(i) through several registrations of the mark with
the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No.
2,565,513 issued April 30, 2002 and Reg. No. 2,498,608 issued October 16,
2001). The Panel finds that
Complainant’s trademark registrations are sufficient to establish rights in the
MSN mark under Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007)
(holding that “[t]his trademark registration [with the USPTO] establishes
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria's Secret Stores Brand Mgmt., Inc. v.
Machuszek, FA 945052 (Nat. Arb.
Forum May 7, 2007) (finding “that Complainant has established rights in the
Complainant argues that Respondent’s <msnrealestate.com> domain name is confusingly similar to Complainant’s MSN mark as it uses the mark in its entirety and simply adds the descriptive words “real estate” and the generic top-level domain (“gTLD”) “.com” to the mark. Complainant argues that part of its business includes offering real estate services online, which it calls “MSN Real Estate.” The Panel finds that the addition of a gTLD is not relevant to the determination of whether the mark is confusingly similar under Policy ¶ 4(a)(i). Additionally, the Panel finds that the addition of the descriptive words “real estate” does not sufficiently alter the mark to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). 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); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Finally, Respondent contends that the <msnrealestate.com> domain name is not confusingly similar because Respondent was using “MS” in combination with “n” and “real estate” to represent “Mortgage Service and Real Estate.” However, Complainant asserts in its Additional Submission that there is no evidence presented by Respondent to indicate that Respondent is known by “Mortgage Service and Real Estate” and therefore Complainant contends that Respondent’s argument does nothing to alleviate the confusingly similar aspects of Complainant’s MSN mark under Policy ¶ 4(a)(i), particularly given the fame of the MSN mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
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 Policy ¶ 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.”).
Complainant
asserts that Respondent is not commonly known by the <msnrealestate.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Area Auto Corp.” Complainant
also offers evidence to indicate that the <msnrealestate.com> domain name
resolves to a website for Diane and Brennaan Velten, a husband and wife Re/Max
real estate team offering real estate services at the <msnrealestate.com> domain name. The Panel finds that Respondent is not
commonly known by the <msnrealestate.com> domain name under Policy ¶
4(c)(ii). See 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.”);
see also Am. Online, Inc. v. World Photo Video & Imaging
Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the
respondent was not commonly known by <aolcamera.com> or
<aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”).
Complainant further contends that Respondent
is using the <msnrealestate.com> domain name to
redirect Internet users to Respondent’s website, which offers competing real
estate services as those offered by Complainant under the MSN mark. The Panel finds that Respondent’s use of the
disputed domain name is not use in connection with a bona fide offering of goods or services under Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii).
Finally, Respondent contends that it has rights or legitimate interests in the <msnrealestate.com> domain name because it uses the website in connection with its “Mortgage Service and Real Estate” business. However, Complainant contends in its Additional Submission that Respondent’s website at the disputed domain name does not even use the terms “Mortgage Service and Real Estate” and therefore Respondent is not commonly known by the name and is instead using Complainant’s well-known mark to redirect Internet users to Respondent’s website, which does not show that Respondent has rights or legitimate interests under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”); see also Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”). The Panel rejects the contention of Respondent.
Complainant
contends that Respondent registered and is using the disputed domain name to
redirect Internet users to Respondent’s website which offers competing goods
and services. The Panel finds that such
use by Respondent constitutes a disruption of Complainant’s business, which is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also EthnicGrocer.com,
Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding
bad faith where the respondent’s sites pass users through to the respondent’s
competing business).
Complainant contends that Respondent registered and is using the <msnrealestate.com> domain name to redirect Internet users to Respondent’s website for the profit of Respondent. Complainant contends that Internet users seeking Complainant’s real estate services under the MSN mark may become confused as to Complainant’s affiliation with the <msnrealestate.com> domain name. Complainant contends that Respondent is profiting through the redirection of clients to its real estate services. Therefore, the Panel concludes that Respondent’s use of the disputed domain name to attract Internet users to its website for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Respondent contends that
it did not intend to register the disputed domain name with “MSN” but rather
just the abbreviations “MS” and “n,” and therefore, Respondent had no bad
faith. However, Complainant contends in
its Additional
Submission that Respondent has failed to offer any evidence that
Respondent, or any other consumer, uses “MSN” as shorthand for “Mortgage
Service and.” The Panel finds that
Respondent’s use of the <msnrealestate.com> domain name to
operate a competing website that is likely to create confusion amongst Internet
users as to Complainant’s affiliation is evidence of bad faith registration and
use under Policy ¶ 4(b)(iv). See Nat’l
Ass’n of Prof’l Baseball Leagues, Inc.
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that although a
trademark involves words that could be generic in a different context, the
reputation of that mark in the field where the mark is associated, means that
the intentional registration and use of a misspelling of that mark manifests
the intent to capitalize on the mark, and constitutes bad faith); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msnrealestate.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch, Panelist
Dated:
November 9, 2007
National
Arbitration Forum
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