Microsoft Corporation v.
Daniel Kaufman
Claim Number: FA0807001213955
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 <mymsn.com>, registered with Innerwise,
Inc. d/b/a Itsyourdomain.com.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
July 3, 2008; the National Arbitration
Forum received a hard copy of the Complaint July
7, 2008.
On July 7, 2008, Innerwise, Inc. d/b/a Itsyourdomain.com
confirmed by e-mail to the National Arbitration Forum that the <mymsn.com>
domain name is registered with Innerwise, Inc.
d/b/a Itsyourdomain.com and that Respondent is the current registrant of
the name. Innerwise, Inc. d/b/a Itsyourdomain.com verified that Respondent is
bound by the Innerwise, Inc. d/b/a
Itsyourdomain.com registration agreement and thereby has 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 8, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 28, 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@mymsn.com by e-mail.
A timely Response was received and determined to be complete on July 24, 2008.
Complainant filed an Additional Submission July 24, 2008, which was
timely and complete in compliance with the National Arbitration Forum’s
Supplemental Rule 7.
On July 31, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
The domain name that Respondent registered, <mymsn.com>, is
identical or confusingly similar to Complainant’s protected MSN mark.
Respondent has no rights to or legitimate interests in the MSN mark and
domain name.
Respondent registered and used the domain name in bad faith.
B. Respondent makes the following response
allegations:
Respondent does not address part one of the three-pronged showing of
identicality or confusing similarity.
Respondent urges that he has rights in the <mymsn.com> domain name that was registered in 1998 and claims
this date to be earlier in time than Complainant’s use of the My MSN services
at its domain site.
That although Complainant alleges interference with
its marketplace by Respondent’s domain name, the disputed domain name consists
of generic terms that can “stand for” “Masters in Nursing” rather than
Complainant’s MSN mark.
Respondent alleges that Complainant offered to buy the
domain name for $70.00 and then offered him $50,000.00 but that when he
accepted the offer Complainant changed its mind.
Respondent admits to forwarding traffic from the
disputed domain name to a music site he owns.
Respondent alleges that he has many profitable domain
name sites in addition to the <myabc> and <mykodak> domain name as
alleged by Complainant.
Respondent avers that registration of such names
combining MY with the marks of others does not establish bad faith in this
instance.
C. Complainant’s Additional Submission sets out
the following:
Complainant offers that “[i]t is evident that Respondent registered the
domain name for the purpose of trying to sell the domain name to Complainant in
1999 for $50,000 and Complainant refused.”
Complainant notes that Respondent concedes that he is forwarding
traffic using the disputed domain name for personal gain.
Complainant also charges that in regards to Respondent’s contention
that MSN could stand for “Masters in Nursing,” nothing at Respondent’s site
concerns nursing.
Complainant registered the MSN trademark in 1995, prior to Respondent’s
registration of the disputed domain name.
Complainant notes that Respondent did not address the issues of
identicality and/or confusing similarity.
Complainant notes that Respondent failed to address any rights to use
the MSN mark.
Complainant urges that Respondent’s past history of registering <mymastercard.com>,
<my abc.com>, and <mykodak.com> permit an inference that Respondent
acts in bad faith.
FINDINGS
Complainant established rights in the MSN mark as of the date of filing in 1997 (Reg. No. 2,153,763 issued April 28, 1998, filed April 25, 1997) with the United States Patent and Trademark Office (“USPTO”).
Complainant established that its mark is known throughout the world and is registered with other governmental trademark authorities worldwide.
Complainant’s rights in its mark were established prior to Respondent’s registration of the disputed domain name in 1998.
The domain name is confusingly similar to Complainant’s well-known and protected mark.
Respondent has not shown rights to or legitimate interests in the domain name containing in its entirety Complainant’s protected mark.
Respondent acted in bad faith in registering and using the disputed domain name.
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 Complainant to 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) 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 its rights in the MSN mark (Reg. No. 2,153,763
issued April 28, 1998, filed April 25, 1997), which was registered with the
United States Patent and Trademark Office (“USPTO”) as well as with other
governmental trademark authorities worldwide.
Complainant also states that the disputed domain name was registered
after Complainant’s mark was registered.
The Panel finds that Complainant has sufficient rights in the mark under
Policy ¶ 4(a)(i). See Thermo Electron Corp. v.
Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the
complainants established rights in marks because the marks were registered with
a trademark authority); see also Am. Int’l Group, Inc. v. Morris,
FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights
in the AIG mark through registration of the mark with several trademark
authorities throughout the world, including the United States Patent and
Trademark office (‘USPTO’)… .”).
Complainant urges that Respondent’s <mymsn.com> domain
name is confusingly similar to Complainant’s MSN mark, in that the disputed
domain name incorporates Complainant’s entire mark and adds the generic word
“my” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of “my”
does not distinguish the disputed domain name under Policy ¶ 4(a)(i); the disputed
domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See
Reese v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level
domain “.com” is insufficient to differentiate a disputed domain name from a
mark); see also NIIT Ltd. v.
Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the
“domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part
thereof, is confusingly similar to the Complainant’s trade name and trademark
NIIT”).
Respondent
contends that the <mymsn.com> domain name is
comprised of common, descriptive terms and as such cannot be found to be
identical to Complainant’s mark. This is not an argument that goes to the first
prong of the burden and the Panel finds that a determination as to whether or
not the domain name consists of generic words is not a part of the discussion under
Policy ¶ 4(a)(i) because this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain name is
identical to or confusingly similar to Complainant’s mark. Moreover, Complainant has a trademark
registration for the MSN mark. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA
915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
Respondent also argues that the <mymsn.com> domain name is not confusingly similar to Complainant’s MSN mark because he incorporates the word “my.” Respondent argues that Complainant did not commence its “my msn” services using the mark until after Respondent registered the disputed domain name. Since the Panel finds that Respondent’s <mymsn.com> domain name was registered after Complainant’s rights in the mark were recognized by the appropriate patenting authorities, this argument fails.
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
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). Then the burden shifts to Respondent to show that
it does have rights to or legitimate interests in the domain name. 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 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 (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 argues that Respondent is not
commonly known by the disputed domain name, in that the registrant of record is
listed as “Daniel Kaufman.” Further, Complainant
urges that Respondent is not licensed or authorized to use Complainant’s MSN mark. Respondent offered no evidence to suggest
that Complainant had in any way authorized by license or permission Respondent
to use the MSN mark in a domain name. Therefore,
the Panel finds that Respondent is not commonly known by the disputed domain
name under Policy ¶ 4(c)(ii) and Respondent has not come forward with proof
that he otherwise has a right to use Complainant’s mark in a domain name. See Instron Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was
not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of
the disputed domain names and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute);
see also Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding
that the respondent was not commonly known by the <thirteen.com> domain
name based on all evidence in the record, and the respondent did not counter
this argument in its response).
Complainant argues that the disputed domain
name redirects Internet users to a website featuring Respondent’s commercial
online music website called “Jango,” which resolves from the <jango.com>
domain name. Complainant asserts that
Respondent is listed as that company’s CEO in press releases and actively seeks
to sign up new members for the business.
Complainant contends that this music-related business competes with
Complainant’s own music services. The
Panel finds that since Respondent is using Complainant’s protected mark in a
competing website and disputed domain name, Respondent has not shown or
provided the Panel with evidence to permit even an inference that Respondent
acquired rights by making 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 Am. Online, Inc. v. Tencent Commc’ns
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the
complainant’s mark “as a portal to suck surfers into a site sponsored by [the
respondent] hardly seems legitimate”); see
also Toronto-Dominion Bank
v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's
sole purpose in selecting the domain names was to cause confusion with the
complainant's website and marks, its use of the names was not in connection
with the offering of goods or services or any other fair use); see also G.D. Searle & Co.
v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because
the respondent is using the infringing domain name to sell prescription drugs,
the panel could infer that the respondent is using the complainant’s mark to
attract Internet users to its website for commercial benefit).
Complainant states in its Additional
Submission that Respondent offered to sell the disputed domain name in 1999 for
$50,000.00, which Complainant refused.
Complainant states that it did offer to reimburse Respondent for the
registration costs, worth $70.00. Complainant
also submitted an e-mail and letter in support of its position that put
Respondent on notice that Complainant would protect its exclusive rights to the
MSN mark. The Panel finds that the
greater weight and degree of the credible proof supports Complainant’s position
that Respondent offered to sell the disputed domain name, which evidences
Respondent’s lack of rights and legitimate interests under Policy ¶
4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8,
2007) (“An attempt by a respondent to sell a domain name to a complainant who
owns a trademark with which the domain name is confusingly similar for an
amount in excess of out-of-pocket costs has been held to demonstrate a lack of
legitimate rights or interests.”); see
also Mothers Against Drunk Driving v.
Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding
that under the circumstances, the respondent’s apparent willingness to dispose
of its rights in the disputed domain name suggested that it lacked
rights or legitimate interests in the domain name).
Respondent argues that
it has a legitimate music business at the <jango.com> domain name. The Panel has no information before it to
refute Respondent’s claim as to the <jango.com> site and finds that
argument to be irrelevant to the outcome here. The issue is whether Respondent can show
rights in the domain name being used to confuse Internet users by diverting
them to Respondent’s <jango.com> site.
Respondent also states that he was unaware of any potential for
confusion that might result from his registering a domain name including the
well-known Complainant’s protected mark and then diverting those who came to
the site to Respondent’s own services. The Panel finds that Respondent offered
no proof to support his claims and has not shown a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i).
Respondent
also argues that the terms of the <mymsn.com>
domain name are generic and of common use and therefore, Complainant cannot
have an exclusive monopoly on the terms on the Internet. The alphabet may be skewed by random selection
to produce any number of combinations that may appear on the surface to be
generic; however, when the shifting of letters produces a mark that matches one
in which a registered holder has exclusive rights, the holder’s rights
prevail. It is unlikely that Respondent
could produce credible proof that he established rights in the internationally-known
Complainant’s protected mark
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that the greater
weight of the credible proof offered by the parties suggests that Respondent
made an offer to sell the disputed domain name.
This supports findings that Respondent registered and used Complainant’s
MSN mark in a domain name in bad faith under Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent
registered the disputed domain name and offered to sell it to Complainant for
$10,600. This demonstrates bad faith registration and use pursuant to Policy ¶
4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale).
Complainant argues that Respondent
has also been the Respondent in numerous other UDRP decisions in which the
disputed domain names were transferred to the respective complainants in those
cases. See Mastercard Int’l v. Kaufman, D2006-1031 (WIPO Oct. 11, 2006); see also Am. Broad.
Here, the Panel finds that this
pattern of conduct by Respondent permits this Panel to infer that here also, Respondent
primarily intended to disrupt Complainant’s business. This inference supports findings that Respondent
engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Mission
KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor”
as “one who acts in opposition to another and the context does not imply or
demand any restricted meaning such as commercial or business competitor”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat.
Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to
divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant asserted here
that Respondent used the confusingly similar disputed domain name to
intentionally attract Internet users to its commercial website. The Panel
agrees; these factors add additional support for findings of bad faith registration and use under Policy ¶
4(b)(iv). See Entrepreneur Media, Inc.
v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to
confuse consumers is not required for a finding of trademark infringement,
intent to deceive is strong evidence of a likelihood of confusion."); 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).
Moreover, Complainant asserts that
Respondent had actual or constructive notice of Complainant and its registered
trademark at the time he registered the disputed domain name, given the
relative fame of the mark. The Panel
agrees, pursuant to Policy ¶ 4(a)(iii). See
Yahoo! Inc. v.
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
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 <mymsn.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 8, 2008.
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