national arbitration forum

 

DECISION

 

Microsoft Corporation v. Noori net

Claim Number: FA1008001343632

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc., Texas, USA.  Respondent is Noori net (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com>, registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2010.  The Complaint was submitted in both Korean and English.

 

On August 29, 2010, Korea Information Certificate Authority, Inc. d/b/a DomainCA.com confirmed by e-mail to the National Arbitration Forum that the <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names are registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com and that Respondent is the current registrant of the names.  Korea Information Certificate Authority, Inc. d/b/a DomainCA.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a DomainCA.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 September 3, 2010, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of September 23, 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@msnfriend.com, postmaster@msnhack.com, postmaster@msn-info.com, and postmaster@msntour.com by e-mail.  Also on September 3, 2010, the Korean language 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 October 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" 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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names are confusingly similar to Complainant’s MSN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names.

 

3.      Respondent registered and used the <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Microsoft Corporation, provides software, services, and solutions to individuals and businesses.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MSN mark (e.g., Reg. No. 2,625,296 issued September 24, 2002).  Complainant also holds trademark registrations with the Korean Intellectual Property Office (“KIPO”) for the MSN mark (e.g., Reg. No. 73,306 issued February 1, 2002).

 

Respondent, Noori net, registered the <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names on February 1, 2007, September 30, 2009, January 24, 2009, and February 15, 2009 respectively.  The disputed domain names resolve to a website that displays an “under construction” message.  The resolving website also states the disputed domain names are for sale.

 

Complainant offers evidence that Respondent has a history of registering domain names that infringe upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants.  See Google Inc. v. Noori net, FA 1311521 (Nat Arb. Forum Apr. 29, 2010); see also Daimler AG v. Noori net, FA 1323972 (Nat. Arb. Forum June 23, 2010); see also Credit Industriel et Commercial S.A. v. Noori net, D2010-0729 (WIPO June 29, 2010).

 

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

 

Complainant claims rights in the MSN mark through its registrations of the mark with the USPTO (e.g., Reg. No. 2,625,296 issued September 24, 2002) as well as the KIPO (e.g., Reg. No. 73,306 issued February 1, 2002).  The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the MSN mark under Policy ¶ 4(a)(i).  See 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); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant contends Respondent’s <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names are confusingly similar to its MSN mark.  Respondent replicates Complainant’s mark in each of the disputed domain names.  Respondent also adds the generic terms “friend,” “hack,” “info,” and “tour” to Complainant’s mark.  Additionally, Respondent includes a hyphen in the <msn-info.com> domain name.  Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in all of the disputed domain names.  The Panel finds the additions of a generic term, hyphen, and gTLD do not sufficiently distinguish a domain name from a mark.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); 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.”).  Accordingly, the Panel determines that Respondent’s <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names are confusingly similar to its MSN mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names.  The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests.  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 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.”).  Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).

 

Complainant asserts it has not authorized Respondent to use its MSN mark in a domain name.  Furthermore, the WHOIS information lists “Noori net” as the registrant of the disputed domain names, which the Panel finds is not similar to any of the <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names.  Based on Complainant’s assertions and the WHOIS registrant information, the Panel finds that Respondent is not commonly known by the disputed domain names under 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Complainant submits screen shots of the website resolving from the disputed domain names.  These images show a website that displays the message “This Domain is for Sale & Under Construction Page.  We are looking for Investors in developing our new WebSite noori.net.”  The resolving webpage also states “This website is under construction now.”  Based on the evidence in the record, the Panel finds Respondent has failed to make active use of the <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names.  Accordingly, the Panel finds Respondent does not use the disputed domain names to make 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 Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).

 

As previously discussed, the disputed domain names resolve to a website that displays the message “This Domain is for Sale” and “you can buy this domain showing this webpage if your price is ok.  Please send us your offer to…”  The Panel finds Respondent’s general offer to sell the disputed domain names, presumably for more than Respondent’s out-of-pocket costs, provides additional evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); 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).

 

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

 

Registration and Use in Bad Faith

 

The Panel finds Respondent’s offer to sell the disputed domain names for more than its out-of-pocket costs indicates registration and use in bad faith under Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under 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).

 

Respondent has been subject to numerous UDRP proceedings, wherein the disputed domain names were ordered to be transferred from Respondent to the respective complainants in those cases.   See Google Inc. v. Noori net, FA 1311521 (Nat Arb. Forum Apr. 29, 2010); see also Daimler AG v. Noori net, FA 1323972 (Nat. Arb. Forum June 23, 2010); see also Credit Industriel et Commercial S.A. v. Noori net, D2010-0729 (WIPO June 29, 2010).  Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith registration and use under the Policy ¶ 4(b)(ii).  See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been the subject of numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).

 

Finally, the Panel finds Respondent registered the disputed domain names after Complainant acquired rights in the MSN mark through its registrations of the mark with the USPTO and the KIPO.  Therefore, the Panel finds Respondent’s failure to make active use of the <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names qualifies as registration and use in bad faith under Policy ¶ 4(a)(iii).  See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO).

 

The Panel finds Complainant has satisfied 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 <msnfriend.com>, <msnhack.com>, <msn-info.com>, and <msntour.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  October 12, 2010

 

 

 

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