Microsoft Corporation v. Webmasterz Entertainment
Claim Number: FA0906001266932
Complainant is Microsoft
Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue is <msnhack.biz> and <msnspy.biz>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2009.
On July 02, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <msnhack.biz> and <msnspy.biz> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 July 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 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@msnhack.biz and postmaseter@msnspy.biz by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <msnhack.biz> and <msnspy.biz> domain names are confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <msnhack.biz> and <msnspy.biz> domain names.
3. Respondent registered and used the <msnhack.biz> and <msnspy.biz> 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 began using the MSN mark as early as 1995. Complainant operates the MSN portal that provides news, information, and other services. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MSN mark (i.e., Reg. No. 2,191,997 issued September 29, 1998).
Respondent registered the <msnhack.biz> and <msnspy.biz> domain names on June 21, 2007 and May 15, 2007, respectively. The disputed domain names resolve to Respondent’s websites featuring advertisements and products designed to access Complainant’s database and the passwords of other users.
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 has registered the MSN mark with the USPTO. The Panel finds that Complainant has established rights in the MSN mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
The Panel finds that Respondent’s <msnhack.biz> and <msnspy.biz> domain
names are confusingly similar to Complainant’s MSN mark under Policy ¶ 4(a)(i) because
the disputed domain names contain Complainant’s mark and add the generic words
“hack” and “spy” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of generic words
and a gTLD fails to distinguish the disputed domain name from Complainant’s
mark pursuant to Policy ¶ 4(a)(i). See Oki Data Am. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com>
domain name is confusingly similar to the complainant’s OKIDATA mark because
“…the fact that a domain name wholly incorporates a complainant’s registered
mark is sufficient to establish identity [sic] or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.”); see also 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 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.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <msnhack.biz> and <msnspy.biz> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume 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 Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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 uses the <msnhack.biz> and <msnspy.biz> domain names to resolve to Respondent’s websites featuring advertisements and products designed to access Complainant’s database and the passwords of other users. The Panel finds Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See 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 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).”).
Complainant asserts that Respondent is not authorized to use
the MSN mark. Respondent failed to offer
evidence showing Respondent is commonly known by the <msnhack.biz> and <msnspy.biz> domain
names. The WHOIS information on the
record lists Respondent as “Webmasterz Entertainment” and there is no evidence
on the record showing Respondent is commonly known by the disputed domain
name. Therefore, the Panel finds that
Respondent is not commonly known by the <msnhack.biz> and <msnspy.biz>
domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent
has no rights or legitimate interests in a disputed domain name where there was
no evidence in the record indicating that the respondent was commonly known by
the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <msnhack.biz> and <msnspy.biz> domain names resolve to Respondent’s websites featuring advertisements and products designed to access Complainant’s database. The Panel infers Respondent profits from the advertisements and sale of Respondent’s products. The Panel finds that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msnhack.biz> and <msnspy.biz> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 5, 2009
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