Microsoft Corporation v. Tan Kim Fong a/k/a Dong Wang a/k/a Ali Aziz a/k/a Nadeem Qadir a/k/a Bladimir Boyiko a/k/a NA Dotsan a/k/a Leonard Bogucki a/k/a Venta a/k/a The data in Bulkregister.com's WHOIS database is p a/k/a Registrate Co. a/k/a Cosmos1
Claim Number: FA0906001265720
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 <ghotmail.com>, <hiotmail.com>, <hotmaikl.com>, <hotmailk.com>, <hotmaim.com>, <hotmaoil.com>, <hotmnail.com>, <hotmqil.com>, <msnmobil.com>, <hotmajl.com>, <ihotmail.com>, <msnmatch.com>, <msnphoto.com>, <msnzonegames.com>, <ahotmail.com>, <hothail.com>, <msngamezone.com>, <msnnetwork.com>, <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>, <msnbctoday.com>, <fhotmail.com>, <hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>, <hotmsail.com>, <khotmail.com>, <microspft.com>, <msmhotmail.com>, <msngaming.com>, <msnhome.com>, <msnsports.com>, <msnzone.com>, <nhotmail.com>, <msnbcc.com>, <hoimail.com>, <mmsnbc.com>, <mnsnbc.com>, <hotmaile.com>, <hotymail.com>, <moicrosoft.com>, <hothotmail.com>, <mhotmail.com>, <msncanada.com>, <msnhomepage.com>, <msnbcdateline.com>, and <chatmsn.com>, registered with Dotregistrar, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 1, 2009.
On June 1, 2009, Dotregistrar, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ghotmail.com>, <hiotmail.com>, <hotmaikl.com>, <hotmailk.com>, <hotmaim.com>, <hotmaoil.com>, <hotmnail.com>, <hotmqil.com>, <msnmobil.com>, <hotmajl.com>, <ihotmail.com>, <msnmatch.com>, <msnphoto.com>, <msnzonegames.com>, <ahotmail.com>, <hothail.com>, <msngamezone.com>, <msnnetwork.com>, <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>, <msnbctoday.com>, <fhotmail.com>, <hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>, <hotmsail.com>, <khotmail.com>, <microspft.com>, <msmhotmail.com>, <msngaming.com>, <msnhome.com>, <msnsports.com>, <msnzone.com>, <nhotmail.com>, <msnbcc.com>, <hoimail.com>, <mmsnbc.com>, <mnsnbc.com>, <hotmaile.com>, <hotymail.com>, <moicrosoft.com>, <hothotmail.com>, <mhotmail.com>, <msncanada.com>, <msnhomepage.com>, <msnbcdateline.com>, and <chatmsn.com> domain names are registered with Dotregistrar, Enom, Inc. and that Respondent is the current registrant of the names. Dotregistrar, Enom, Inc. has verified that Respondent is bound by the Dotregistrar, Enom, 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 June 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 2009 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@ghotmail.com, postmaster@hiotmail.com, postmaster@hotmaikl.com, postmaster@hotmailk.com, postmaster@hotmaim.com, postmaster@hotmaoil.com, postmaster@hotmnail.com, postmaster@hotmqil.com, postmaster@msnmobil.com, postmaster@hotmajl.com, postmaster@ihotmail.com, postmaster@msnmatch.com, postmaster@msnphoto.com, postmaster@msnzonegames.com, postmaster@ahotmail.com, postmaster@hothail.com, postmaster@msngamezone.com, postmaster@msnnetwork.com, postmaster@todaymsnbc.com, postmaster@weekendmsnbc.com, postmaster@weekendtodaymsnbc.com, postmaster@msnbctoday.com, postmaster@fhotmail.com, postmaster@hotmaiel.com, postmaster@hotmaiul.com, postmaster@hotmalil.com, postmaster@hotmsail.com, postmaster@khotmail.com, postmaster@microspft.com, postmaster@msmhotmail.com, postmaster@msngaming.com, postmaster@msnhome.com, postmaster@msnsports.com, postmaster@msnzone.com, postmaster@nhotmail.com, postmaster@msnbcc.com, postmaster@hoimail.com, postmaster@mmsnbc.com, postmaster@mnsnbc.com, postmaster@hotmaile.com, postmaster@hotymail.com, postmaster@moicrosoft.com, postmaster@hothotmail.com, postmaster@mhotmail.com, postmaster@msncanada.com, postmaster@msnhomepage.com, postmaster@msnbcdateline.com, and postmaster@chatmsn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <ghotmail.com>, <hiotmail.com>, <hotmaikl.com>, <hotmailk.com>, <hotmaim.com>, <hotmaoil.com>, <hotmnail.com>, <hotmqil.com>, <hotmajl.com>, <ihotmail.com>, <ahotmail.com>, <hothail.com>, <fhotmail.com>, <hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>, <hotmsail.com>, <khotmail.com>, <nhotmail.com>, <hoimail.com>, <hotmaile.com>, <hotymail.com>, <hothotmail.com>, and <mhotmail.com> domain names are confusingly similar to Complainant’s HOTMAIL mark; Respondent’s <msnmobil.com>, <msnmatch.com>, <msnphoto.com>, <msnzonegames.com>, <msngamezone.com>, <msnnetwork.com>, <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>, <msnbctoday.com>, <msmhotmail.com>, <msngaming.com>, <msnhome.com>, <msnsports.com>, <msnzone.com>, <msnbcc.com>, <mmsnbc.com>, <mnsnbc.com>, <msncanada.com>, <msnhomepage.com>, <msnbcdateline.com>, and <chatmsn.com> domain names are confusingly similar to Complainant’s MSN mark; and Respondent’s <microspft.com> and <moicrosoft.com> domain names are confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <ghotmail.com>, <hiotmail.com>, <hotmaikl.com>, <hotmailk.com>, <hotmaim.com>, <hotmaoil.com>, <hotmnail.com>, <hotmqil.com>, <msnmobil.com>, <hotmajl.com>, <ihotmail.com>, <msnmatch.com>, <msnphoto.com>, <msnzonegames.com>, <ahotmail.com>, <hothail.com>, <msngamezone.com>, <msnnetwork.com>, <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>, <msnbctoday.com>, <fhotmail.com>, <hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>, <hotmsail.com>, <khotmail.com>, <microspft.com>, <msmhotmail.com>, <msngaming.com>, <msnhome.com>, <msnsports.com>, <msnzone.com>, <nhotmail.com>, <msnbcc.com>, <hoimail.com>, <mmsnbc.com>, <mnsnbc.com>, <hotmaile.com>, <hotymail.com>, <moicrosoft.com>, <hothotmail.com>, <mhotmail.com>, <msncanada.com>, <msnhomepage.com>, <msnbcdateline.com>, and <chatmsn.com> domain names.
3. Respondent registered and used the <ghotmail.com>, <hiotmail.com>, <hotmaikl.com>, <hotmailk.com>, <hotmaim.com>, <hotmaoil.com>, <hotmnail.com>, <hotmqil.com>, <msnmobil.com>, <hotmajl.com>, <ihotmail.com>, <msnmatch.com>, <msnphoto.com>, <msnzonegames.com>, <ahotmail.com>, <hothail.com>, <msngamezone.com>, <msnnetwork.com>, <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>, <msnbctoday.com>, <fhotmail.com>, <hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>, <hotmsail.com>, <khotmail.com>, <microspft.com>, <msmhotmail.com>, <msngaming.com>, <msnhome.com>, <msnsports.com>, <msnzone.com>, <nhotmail.com>, <msnbcc.com>, <hoimail.com>, <mmsnbc.com>, <mnsnbc.com>, <hotmaile.com>, <hotymail.com>, <moicrosoft.com>, <hothotmail.com>, <mhotmail.com>, <msncanada.com>, <msnhomepage.com>, <msnbcdateline.com>, and <chatmsn.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, manufactures, markets, and sells computer software and related products and services. Complainant is the owner of numerous proprietary marks for its goods and services and is internationally known by its MICROSOFT mark. Complainant’s portal under the MSN mark is one of the services offered by Complainant that provides news and information. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MSN mark (i.e., Reg. No. 2,153,763 issued April 28, 1998). One of the other services offered by Complainant is a free e-mail service under the HOTMAIL mark. Complainant further holds various trademark registrations with the USPTO for the HOTMAIL mark (i.e., Reg. No. 2,165,601 issued June 16, 1998).
Respondent registered
the disputed domain names no earlier than January 7, 2000. The <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>,
<msnbctoday.com>, <khotmail.com>, <microspft.com>,
<msnbcc.com>, <mmsnbc.com>, <mnsnbc.com>,
<mhotmail.com>, and <msnbcdateline.com> disputed
domain names resolve to a website featuring a search engine and advertisements
relating to Complainant’s competitors. The
<ghotmail.com>,
<hiotmail.com>, <hotmaikl.com>, <hotmailk.com>,
<hotmaim.com>, <hotmaoil.com>, <hotmnail.com>,
<hotmqil.com>, <msnmobil.com>, <hotmajl.com>,
<ihotmail.com>, <msnmatch.com>, <msnphoto.com>,
<msnzonegames.com>, <ahotmail.com>, <hothail.com>,
<msngamezone.com>, <msnnetwork.com>, <fhotmail.com>,
<hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>,
<hotmsail.com>, <msmhotmail.com>, <msngaming.com>,
<msnhome.com>, <msnsports.com>, <msnzone.com>,
<nhotmail.com>, <hoimail.com>, <hotmaile.com>,
<hotymail.com>, <moicrosoft.com>, <hothotmail.com>,
<msncanada.com>, <msnhomepage.com>, and <chatmsn.com>
disputed domain names resolve to a website displaying and
advertising 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.
Preliminary Issue:
Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that while the WHOIS information provides multiple Respondents, one person, “Alex Vorot” (Respondent), actually owns the forty eight domain names and is the true Respondent for this case. Complainant provides evidence showing that the disputed domain names are redirected through <ownbox.com>, a website owned by Respondent. Complainant further shows in its Complaint that the “The data in Bulkregister.com's WHOIS database is p,” “Registrate Co.,” “Venta,” “NA Dotsan,” and “Leonard Bogucki” names are known aliases of Respondent. The Complainant connects the “Tan Kim Fong” name to Respondent through a “Lorna Kang.” The domains in the name of “Tan Kim Fong” were previously in the name of “Lorna Kang” which, Complainant asserts, is another known alias of Respondent. The domain names held by “Nadeem Qadir” include the same e-mail as the domain names under the “Tan Kim Fong” name. Furthermore, Complainant alleges that those domain names were formerly held under Respondent’s known aliases “Amjad Kauser” or “Mahmoud Nadim.” Additionally, Claimant contends the “Bladimir Boyiko” name is another alias of Respondent and is also an administrative contact for the <ownbox.com> domain name held by Respondent. The Complainant further claims that the “Cosmos1” name uses an e-mail address associated with the EuroStar Group, also associated with Respondent. Finally, the domain names under the “Dong Wang” and “Ali Aziz” names route through Respondent’s <ownbox.com> domain name and Complainant argues this fact is sufficient to conclude that the names are aliases of Respondent.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant has registered both the MSN mark and the HOTMAIL mark with the USPTO. Previous panels have held that registration of a mark with the USPTO is sufficient to establish a complainant’s rights under Policy ¶ 4(a)(i). Therefore, the Panel finds that Complainant has established rights in the HOTMAIL and MSN marks through the registrations with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); 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).
While trademark registration is one way to demonstrate rights in a mark, governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels have determined that a federal registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant alleges registration of its MICROSOFT mark, but failed to attach such evidence. However, Complainant offers evidence of its continuous and extensive use of the mark since 1975. Complainant began using the MICROSOFT mark in 1975, and is a widely known international company. BusinessWeek found the MICROSOFT mark to be the third most valuable brand in the world in 2008. Complainant owns various domain name registrations incorporating the MICROSOFT mark including the domain name <microsoft.com>. Therefore, the Panel finds that Complainant has established common law rights in the MICROSOFT mark through continuous and extensive commercial use and secondary meaning predating Respondent’s registrations of the disputed domains name under Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Respondent’s <ghotmail.com>, <hiotmail.com>,
<hotmaikl.com>, <hotmailk.com>,
<hotmaim.com>, <hotmaoil.com>, <hotmnail.com>,
<hotmqil.com>, <hotmajl.com>,
<ihotmail.com>, <ahotmail.com>,
<hothail.com>, <fhotmail.com>,
<hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>,
<hotmsail.com>, <khotmail.com>, <nhotmail.com>,
<hoimail.com>, <hotmaile.com>, <hotymail.com>,
<hothotmail.com>, and <mhotmail.com> domain
names are confusingly similar to Complainant’s HOTMAIL mark. The disputed domain names add the generic
top-level domain “.com” and contain simple misspellings, such as additions or
subtractions of letters, of Complainant’s mark.
The Panel finds that the misspellings of Complainant’s mark do not
distinguish the disputed domain names from the mark under Policy ¶ 4(a)(i). The Panel
further finds generic top-level domains to be irrelevant for the purpose of a Policy
¶ 4(a)(i) analysis.
Thus, the Panel finds that these disputed domain names are confusingly
similar to Complainant’s HOTMAIL mark under Policy ¶ 4(a)(i). See Internet Movie Database,
Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005)
(finding that the respondent’s disputed domain names were confusingly similar
to the complainant’s mark because the disputed domain names were common misspellings
of the mark involving keys that were adjacent to the current keys comprising
the complainant’s mark); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the
<smirnof.com> domain name confusingly similar to the complainant’s
SMIRNOFF mark because merely removing the letter “f” from the mark was
insignificant); see also 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).
Respondent’s <msnmobil.com>, <msnmatch.com>, <msnphoto.com>, <msnzonegames.com>, <msngamezone.com>, <msnnetwork.com>, <msngaming.com>, <msnhome.com>, <msnsports.com>, <msnzone.com>, <msncanada.com>, <msnhomepage.com>, <chatmsn.com>, <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>, and <msnbctoday.com>, <msnbcc.com>, <mmsnbc.com>, and <mnsnbc.com> domain names are confusingly similar to Complainant’s MSN mark. The disputed domain names contain Complainant’s entire MSN mark, sometimes misspelled, and simply add one or two generic or descriptive words relating to Complainant’s business and the generic top-level domain “.com.” The Panel finds the additions of generic or descriptive terms relating to Complainant’s business and various misspellings of Complainant’s MSN mark fail to distinguish the disputed domain names from Complainant’s MSN mark pursuant to Policy ¶ 4(a)(i). The Panel further finds that generic top-level domain names are not taken into account under Policy ¶ 4(a)(i). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s MSN mark under Policy ¶ 4(a)(i). See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent’s <msmhotmail.com> domain name is confusingly similar to Complainant’s MSN mark as well. The disputed domain name includes a common misspelling of Complainant’s MSN mark by replacing the “n” with an “m” and simply adds Complainant’s HOTMAIL mark and the generic top-level domain “.com.” The Panel finds that common misspellings, the combination of two of Complainant’s marks, and the addition of a generic top-level domain all fail to sufficiently distinguish Respondent’s disputed domain name from Complainant’s marks under Policy ¶ 4(a)(i). For that reason, the Panel finds the disputed domain name to be confusingly similar to the MSN and HOTMAIL marks pursuant to Policy ¶ 4(a)(i). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Respondent’s <microspft.com>
and <moicrosoft.com> domain names are confusingly similar
to Complainant’s MICROSOFT mark. The
disputed domain names simply contain misspellings of Complainant’s mark and the
addition of the generic top-level domain “.com.” The Panel finds that such misspellings fail
to sufficiently distinguish the disputed domain names from Complainant’s
MICROSOFT mark and that the addition of a top-level domain is irrelevant under
Policy ¶ 4(a)(i).
Consequently, the Panel finds the disputed domain names and
Complainant’s MICROSOFT mark are confusingly similar pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Domain Registration
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the disputed domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent’s <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>,
<msnbctoday.com>, <khotmail.com>, <microspft.com>,
<msnbcc.com>, <mmsnbc.com>, <mnsnbc.com>,
<mhotmail.com>, and <msnbcdateline.com> domain names resolve to a website featuring search engines and advertisements, some of which relate to Complainant’s competitors. The Panel finds that this use of the disputed domain names that are confusingly similar to Complainant’s marks is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Respondent is using the <ghotmail.com>, <hiotmail.com>, <hotmaikl.com>, <hotmailk.com>, <hotmaim.com>, <hotmaoil.com>, <hotmnail.com>, <hotmqil.com>, <msnmobil.com>, <hotmajl.com>, <ihotmail.com>, <msnmatch.com>, <msnphoto.com>, <msnzonegames.com>, <ahotmail.com>, <hothail.com>, <msngamezone.com>, <msnnetwork.com>, <fhotmail.com>, <hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>, <hotmsail.com>, <msmhotmail.com>, <msngaming.com>, <msnhome.com>, <msnsports.com>, <msnzone.com>, <nhotmail.com>, <hoimail.com>, <hotmaile.com>, <hotymail.com>, <moicrosoft.com>, <hothotmail.com>, <msncanada.com>, <msnhomepage.com>, and <chatmsn.com> domain names to resolve to a website featuring adult-oriented content. The Panel finds that this use of the disputed domain names for the purpose of redirecting Internet users interested in Complainant to Respondent’s website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under 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 adult-oriented 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)); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by any of the disputed domain names. Complainant asserts that Respondent has never been authorized or licensed to use the MICROSOFT, MSN, or HOTMAIL marks. The WHOIS information identifies the Respondent as “Tan Kim Fong,” “Nadeem Qadir,” “Bladmir Boyiko,” “NA Doston,” “Cosmos1,” “Dong Wang,” and “Ali Aziz.” Complainant asserts that the listed names represent aliases for “Alex Vorot.” Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Moreover, Respondent’s use of the <ghotmail.com>, <hiotmail.com>, <hotmaikl.com>, <hotmailk.com>, <hotmaim.com>, <hotmaoil.com>, <hotmnail.com>, <hotmqil.com>, <hotmajl.com>, <ihotmail.com>, <ahotmail.com>, <hothail.com>, <fhotmail.com>, <hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>, <hotmsail.com>, <khotmail.com>, <microspft.com>, <nhotmail.com>, <hoimail.com>, <hotmaile.com>, <hotymail.com>, <moicrosoft.com>, <hothotmail.com>, and <mhotmail.com> domain names constitutes typosquatting. The Panel finds that Respondent’s use of domain names that are common misspellings of the Complainant’s respective MICROSOFT and HOTMAIL marks to redirect Internet users seeking Complainant’s websites fails to establish rights or interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent has engaged in a pattern of registering trademark-related domain names in bad faith. The Panel finds that Respondent has engaged in such a pattern of bad faith registration and use due to Respondent’s registration of the instant forty-eight disputed domain names pursuant to Policy ¶ 4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Respondent is using the <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>,
<msnbctoday.com>, <khotmail.com>, <microspft.com>,
<msnbcc.com>, <mmsnbc.com>, <mnsnbc.com>,
<mhotmail.com>, and <msnbcdateline.com> domain
names to redirect Internet users interested in Complainant’s websites to a
search engine and advertisements of Complainant’s competitors. The
Panel finds that such use constitutes disruption of Complainant’s business and
bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Airlines, Inc.
v.
The Panel infers that Respondent receives click-through fees
for redirecting Internet users through the disputed domain names resolving to the websites featuring the
search engines and advertisements of Complainant’s competitors or adult
oriented content. The Panel finds that
both uses constitute bad faith registration and use under Policy ¶ 4(b)(iv). See
Finally, Respondent’s <ghotmail.com>, <hiotmail.com>, <hotmaikl.com>,
<hotmailk.com>, <hotmaim.com>, <hotmaoil.com>,
<hotmnail.com>, <hotmqil.com>, <hotmajl.com>,
<ihotmail.com>, <ahotmail.com>, <hothail.com>,
<fhotmail.com>, <hotmaiel.com>, <hotmaiul.com>,
<hotmalil.com>, <hotmsail.com>, <khotmail.com>,
<microspft.com>, <nhotmail.com>, <hoimail.com>,
<hotmaile.com>, <hotymail.com>, <moicrosoft.com>,
<hothotmail.com>, and <mhotmail.com> domain
names show evidence of typosquatting through the use of common misspellings of
Complainant’s respective MICROSOFT and HOTMAIL marks. Therefore, the Panel finds Respondent’s
practice of typosquatting constitutes bad faith registration and use pursuant
to Policy ¶ 4(a)(iii).
See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net
1111111111, D2003-0232 (WIPO May 22, 2003) (finding the
respondent registered and used the domain name in bad faith because the
respondent “created ‘a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of the Respondent’s web
site or location’. . . through Respondent’s persistent practice of
‘typosquatting’”); see also Bank of Am. Corp. v. Tak Ume domains for
sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s
registration and use of the disputed domain name demonstrates a practice
commonly referred to as ‘typosquatting.’
This practice diverts Internet users who misspell Complainant’s mark to
a website apparently owned by Respondent for Respondent’s commercial gain.).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <ghotmail.com>, <hiotmail.com>, <hotmaikl.com>, <hotmailk.com>, <hotmaim.com>, <hotmaoil.com>, <hotmnail.com>, <hotmqil.com>, <msnmobil.com>, <hotmajl.com>, <ihotmail.com>, <msnmatch.com>, <msnphoto.com>, <msnzonegames.com>, <ahotmail.com>, <hothail.com>, <msngamezone.com>, <msnnetwork.com>, <todaymsnbc.com>, <weekendmsnbc.com>, <weekendtodaymsnbc.com>, <msnbctoday.com>, <fhotmail.com>, <hotmaiel.com>, <hotmaiul.com>, <hotmalil.com>, <hotmsail.com>, <khotmail.com>, <microspft.com>, <msmhotmail.com>, <msngaming.com>, <msnhome.com>, <msnsports.com>, <msnzone.com>, <nhotmail.com>, <msnbcc.com>, <hoimail.com>, <mmsnbc.com>, <mnsnbc.com>, <hotmaile.com>, <hotymail.com>, <moicrosoft.com>, <hothotmail.com>, <mhotmail.com>, <msncanada.com>, <msnhomepage.com>, <msnbcdateline.com>, and <chatmsn.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 14, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum