Microsoft Corporation v. PPG a/k/a Mobeen Rahman
Claim Number: FA0804001173275
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <msnstatus.com>, <msnblockchecker.com>, and <coolmsn.com>, registered with Enom, 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
On
On April 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 2008 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@msnstatus.com, postmaster@msnblockchecker.com, and postmaster@coolmsn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <msnstatus.com>, <msnblockchecker.com>, and <coolmsn.com> domain names are confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <msnstatus.com>, <msnblockchecker.com>, and <coolmsn.com> domain names.
3. Respondent registered and used the <msnstatus.com>, <msnblockchecker.com>, and <coolmsn.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant manufactures, markets, and sells computer
software and related products and services, including a news and information
network known as the Microsoft Network, or “MSN.” Complainant registered the MSN mark with the
United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <msnstatus.com>
domain name
on
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.
The Panel finds that Complainant has established rights in
the MSN mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Complainant contends that
Respondent’s <msnstatus.com>, <msnblockchecker.com>, and <coolmsn.com> domain names are confusingly similar to its MSN mark. The <msnstatus.com>
domain name differs from Complainant’s
mark in two ways: (1) the term “status” has been added to the end of the mark;
and (2) the generic top-level domain (“gTLD”) “.com” has been added. The <msnblockchecker.com>
domain name differs from Complainant’s
mark in two ways: (1) the term “blockchecker” has been added to the end of the
mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added. The <coolmsn.com>
domain name differs from Complainant’s mark
in two ways: (1) the term “cool” has been added to the beginning of the mark;
and (2) the generic top-level domain (“gTLD”) “.com” has been added. Adding terms that describe the content of a
site, or generic terms like “cool,” to a mark does not add distinctive features
sufficient to reduce or eliminate the likelihood of confusion. Moreover, the addition of the gTLD “.com” does
not distinguish the disputed domain names from the mark because all registered
domains are required to have a top-level domain. Ergo, the Panel finds that these changes do
not minimize or eliminate the resulting likelihood of confusion, and so
Respondent’s disputed domain names are not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat.
Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark
and merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement” did not add any distinctive features capable of overcoming
a claim of confusing similarity); see also Yahoo! Inc. v.
Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use
of multiple domain names incorporating the distinctive and famous YAHOO!,
Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’
and ‘financial’ to be confusingly similar to the complainant’s marks and likely
to mislead Internet users into believing that products and services offered by
the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given
the similarity of the names and products and services offered); see also Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain names. Complainant has made a prima facie case 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Complainant contends that Respondent is not commonly known
by the disputed domain names nor have they ever been the owner or licensee of
the MSN mark. The WHOIS record for the <msnstatus.com> domain name lists
Respondent as “PPG a/k/a Mobeen Rahman.”
The WHOIS records for the <msnblockchecker.com>
and <coolmsn.com> domain names
list Respondent as “Mobeen Rahman.” This
evidence, along with the fact that Respondent has failed to show any evidence
contrary to Complainant’s contentions, compels the Panel to find that Respondent
is not commonly known as <msnstatus.com>,
<msnblockchecker.com>, or <coolmsn.com> pursuant to Policy ¶
4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum
Respondent maintains websites at <msnstatus.com> and <msnblockchecker.com> that offer services related to Complainant’s business without authorization from Complainant, and solicit e-mail addresses from Internet visitors in what Complainant contends is an attempt at “phishing.” The Panel finds that this use of the <msnstatus.com> and <msnblockchecker.com> domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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, which offered both the complainant’s products and those of the complainant’s competitors); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent maintains a website at <coolmsn.com> that features links to third-party websites. The Panel finds that this use of the <coolmsn.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain names to divert Internet customers from Complainant’s website to
Respondent’s websites that resolve from the disputed domain names, through the
confusion caused by the similarity between the MSN mark and the disputed domain
names. The Panel finds that Respondent’s
uses of the disputed domain names disrupt Complainant’s business, and are
evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining commercially through this diversion, both through click-through fees at the website to which the <coolmsn.com> domain name resolves, and through the services that Respondent is offering at the websites to which the <msnstatus.com> and <msnblockchecker.com> domain names resolve. The Panel finds that these are intentional uses of the disputed domain names for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), these uses are also evidence of registration and use in bad faith. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Respondent is soliciting confidential personal information
at the websites to which the <msnstatus.com>
and
<msnblockchecker.com> domain names resolve in what Complainant
contends is an attempt at “phishing.” The
Panel finds that this use also constitutes bad faith in the registration and
use of the <msnstatus.com> and
<msnblockchecker.com> domain names pursuant to Policy ¶ 4(a)(iii). See Capital One Fin.
Corp. v. Howel, FA 289304 (Nat. Arb. Forum
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 <msnstatus.com>, <msnblockchecker.com>, and <coolmsn.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 16, 2008
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