Microsoft Corporation v. Wayne Daly
Claim Number: FA1102001371378
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Wayne Daly (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msnphotos.com> ("the Domain Name"), registered with GoDaddy.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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2011; the National Arbitration Forum received payment on February 4, 2011.
On February 7, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <msnphotos.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 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@msnphotos.com. Also on February 8, 2011, 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.
A timely Response was received and determined to be complete on February 14, 2011.
On February 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant's submissions can be summarised as follows:
Founded in 1975 Microsoft is a world leader in software and related services and is the owner of more than 25 United States registrations for MSN and related trade marks and more than 200 such registrations throughout the world. The mark has been used continuously since 1995 for Internet-related services including a photos site. The mark is well known and world famous.
The Domain Name in confusingly similar to Complainant's famous MSN mark, incorporating the MSN mark in its entirety along with the generic term "photos" and the generic TLD “.com.” These differences are insufficient to avoid confusion.
Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not commonly know by the MSN mark, nor has the Respondent used the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent is not affiliated with the Complainant in any way and is not licensed by the Complainant in any way and is not an authorised distributor.
Failure to develop a web site demonstrates a lack of genuine interest in the Domain Name.
The Respondent must have been aware of the Complainant's famous mark.
Respondent registered the Domain Name in bad faith. The page attached to the Domain Name initially entitled "MSN Photos" asked "anyone wanna buy domain name?" On the same day he registered the Domain Name he contacted the Complainant and offered to sell the Domain Name. The Respondent also offered the Domain Name for sale by auction. Registering a well-known mark as a domain name for sale is evidence of bad faith. In response to a request to transfer the Domain Name, the Respondent did not respond but changed the page to a new page promoting products and services that compete with the Complainant's. Presumably, Respondent receives compensation for directing consumers to these third-party sites. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's MSN mark as to the source or affiliation of these products and services.
B. Respondent
Respondent stated that he registered the name to make a site about his camping photos and e-mailed Microsoft Ireland to ask if this was okay. When he did not get a reply, he said he made a different web site instead. He says he would not have e-mailed Microsoft if he was trying to hide anything and states he is happy to give Microsoft the Domain Name.
The Complainant owns registered trade marks for MSN for Internet services across the world and has used the mark in relation to the same since 1995. The Respondent registered the Domain Name on 24 January 2011, has tried to sell the name and has used it for commercial links to web sites offering competing goods and services with no connection to the Complainant.
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."
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.
The Panel's opinion is that the Complainant has rights in a trade mark that is confusingly similar to the Domain Name for the purposes of the Policy and that the Respondent has no legitimate interest in the name and has used it in bad faith.
However, it has been held that in circumstances such as this, where the Respondent has not contested the transfer of the Domain Name and agrees to transfer the Domain Name to the Complainant, the Panel may decide to forego the lengthy traditional UDRP analysis and order an immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). As such the Panel will order the transfer of the Domain Name to the Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msnphotos.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 22, 2011
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