national arbitration forum

 

DECISION

 

Microsoft Corporation v. Jonathan a/k/a Jonathan Garcia

Claim Number: FA1007001336916

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., Texas, USA.  Respondent is Jonathan a/k/a Jonathan Garcia (“Respondent”), Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <msnbloccato.com>, registered with eNom, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2010.

 

On July 22, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <msnbloccato.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the 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 July 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@msnbloccato.com by e-mail.  Also on July 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 20, 2010, 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <msnbloccato.com> domain name is confusingly similar to Complainant’s MSN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <msnbloccato.com> domain name.

 

3.      Respondent registered and used the <msnbloccato.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Microsoft Corporation, is a global manufacturer and distributor of computer software, products and services.  Complainant began using its MSN mark in 1995 as an Internet search engine, news provider, e-mail hub and instant messaging service.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its MSN mark (e.g., Reg. No. 2,131,644 issued January 27, 1998).  Complainant also owns numerous worldwide trademark registrations for its MSN mark including in Respondent’s country of Spain with the Spanish Patent and Trademark Office (“SPTO”) (e.g., Reg. No. 1,995,993 issued November 20, 1996).

 

Respondent, Jonathan a/k/a Jonathan Garcia, registered the <msnbloccato.com> domain name on January 27, 2010.  Respondent’s disputed domain name previously resolved to a website that purportedly allowed Internet users to find out who had blocked their e-mail messages on MSN by inputting their e-mail address and password.  After July 20, 2010 Respondent’s disputed domain name re-directs Internet users to a website at <es-facil.com> that advertises an Internet user’s ability to profit from sending advertisements to the e-mail addresses of others and who receive advertisements at their e-mail address.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in its MSN mark pursuant to Policy ¶ 4(a)(i) through its multiple worldwide trademark registrations, including those with the USPTO (e.g., Reg. No. 2,131,644 issued January 27, 1998) and SPTO (e.g., Reg. No. 1,995,993 issued November 20, 1996).  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of 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).

 

Complainant alleges that the <msnbloccato.com> domain name is confusingly similar to Complainant’s MSN mark because the domain name incorporates Complainant’s MSN mark entirely, adds the generic Italian term “bloccato” which means “blocked” in English, and adds the generic top-level domain (“gTLD”) “.com.”  Complainant argues that such changes to its mark are not sufficient to render the disputed domain name distinct from Complainant’s mark.  See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); 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 agrees and finds that Respondent’s <msnbloccato.com> domain name is confusingly similar to Complainant’s MSN mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not possess rights and legitimate interests in the <msnbloccato.com> domain name under Policy ¶ 4(a)(ii).  Complainant is required to produce a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to display that it does possess rights or legitimate interests in the disputed domain name.  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 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).  The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <msnbloccato.com> domain name.  Due to Respondent’s failure to respond to these proceedings, the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the <msnbloccato.com> domain name unless clearly contradicted by the evidence.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); 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.”).  However, the Panel will analyze the evidence on record to determine whether Respondent has rights and legitimate interests in the <msnbloccato.com> domain name under Policy ¶ 4(c). 

 

Complainant contends that Respondent is not commonly known by the disputed domain name nor has Complainant granted Respondent permission to use its MSN mark in any way.  The WHOIS information for the <msnbloccato.com> domain name identifies “Jonathan a/k/a Jonathan Garcia” as the registrant, and Respondent has not submitted any evidence to refute Complainant’s allegations.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under 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 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.”).

 

Complainant contends that Respondent previously used the disputed domain name to resolve to a website that purportedly allowed Internet users to check who had blocked their e-mail messages.  Complainant asserts that Internet users were asked to enter their e-mail address and password in order to find out who had blocked their messages.  Complainant alleges that Respondent was using the e-mail address and password information in order to gain access to the users personal and account information, and as such was not using the disputed domain name for a legitimate purpose.  The Panel agrees and finds that Respondent’s previous use of the <msnbloccato.com> domain name to request Internet users e-mail login and password information is a form of phishing and is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial for fair use under Policy ¶ 4(c)(iii).  See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).

 

Complainant further contends that Respondent, after July 20, 2010, re-directed the disputed domain name to a website located at <es-facil.com>.  Complainant contends that the website obtains revenues from advertisers and pays Internet users who send advertisements to the e-mail addresses of other parties and who agree to receive advertisements at their own e-mail address.  Complainant alleges that such commercial use of the confusingly similar domain name is further evidence that Respondent lacks rights and legitimate interests in the <msnbloccato.com> domain name.  The Panel agrees and finds that Respondent’s current use of the <msnbloccato.com> domain name to operate an online advertisement and solicitation business is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also 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).”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.  

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent commercially benefits from its prior and current use of the disputed domain name.  The Panel presumes that Respondent commercially benefitted from the personal and account information received from Internet users and the Panel also presumes that Respondent receives some commercial gain from <es-facil>, a website that pays advertisers and Internet users to send advertisements through e-mail.  The Panel determines Respondent’s use of the confusingly similar <msnbloccato.com> domain name for this purpose is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).

 

Complainant contends that Respondent formerly used the <msnbloccato.com> domain name to resolve to a website that was a part of a phishing scheme.  Internet users, upon accessing the website, were asked for their e-mail addresses and passwords.  The website resolving from the disputed domain name purportedly would use this information to determine who had blocked their e-mails.  The Panel finds Respondent’s use of the disputed domain name to attempt to gain personal and account information from Internet users is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

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 <msnbloccato.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  August 30, 2010

 

 

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