Microsoft Corporation v. Adinalzir Pereira Lamego
Claim Number: FA1103001380726
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Adinalzir Pereira Lamego (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radiomsn.net>, registered with Everyone’s Internet, Ltd. d/b/a ResellOne.net.
The undersigned Nathalie Dreyfus certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2011; the National Arbitration Forum received payment on March 28, 2011.
On March 28, 2011, Everyone’s Internet, Ltd. d/b/a ResellOne.net confirmed by e-mail to the National Arbitration Forum that the <radiomsn.net> domain name is registered with Everyone’s Internet, Ltd. d/b/a ResellOne.net and that Respondent is the current registrant of the name. Everyone’s Internet, Ltd. d/b/a ResellOne.net has verified that Respondent is bound by the Everyone’s Internet, Ltd. d/b/a ResellOne.net 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 March 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@radiomsn.net. Also on March 30, 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 April 15, 2011.
On April 20th, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In this proceeding Complainant is Microsoft Corporation (hereafter “Microsoft”), a worldwide leader in software and services dedicated to people and companies. Microsoft is the owner of numerous trademarks, including the famous mark MSN.
Among other things, Microsoft operates the MSN portal which provides a music service via <music.msn.com>.
Microsoft owns more than twenty five United States registrations for MSN and related trademarks, and more than two hundred registrations throughout the world. Previous UDRP decisions have found that MSN is a well-known and world famous mark.
Regarding the confusing similarity to Complainant’s trademark, Complainant finds that the domain name in dispute is confusingly similar to the MSN trademark owned by Complainant.
In addition, Respondent does not have any legitimate interest or rights justifying the registration of the disputed domain name. Indeed, Respondent is not commonly known by Complainant’s MSN mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
As for registration in bad faith, when Respondent registered the domain name, the MSN mark had been in use for many years and was well known, including in Brazil where Respondent is located. It is obvious that Respondent was familiar with the MSN mark at the time of registration of the disputed domain name and that he intentionally adopted a domain name incorporating the MSN trademark so as to create confusion with Complainant. When it comes to bad faith use, bad faith is characterized when Respondent's use of the domain name at issue, which resolves to a website where similar services are offered to Internet users, is likely to confuse the users into believing that Complainant is the source of or is the sponsor of the services offered at the site.
B. Respondent
Respondent provided the arbitration center with a short response. He alleged to have already required the cancellation of the domain name and added that there was no bad faith or any action intending to harm Complainant.
He sent further emails to the arbitration center, in which he notably refused to “enter the dispute process”. These emails are not considered as Additional Submissions since they don’t abide by the National Arbitration Forum Supplemental Rule.
1 – The disputed domain name is identical or confusingly similar to Complainant’s trademark MSN;
2 – Respondent has no rights or legitimate interest in respect of the disputed domain name;
3 – Respondent registered and is using the disputed domain name in bad faith.
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.
Complainant has submitted evidence proving that it owns numerous registrations worldwide for its MSN mark, including more than forty MSN trademark registrations in the United States and five MSN trademark registrations in Brazil.
Complainant presents the following copy of the trademark certificate for its MSN mark:
· United States Patent and Trademark Office trademark MSN No. 2,153,763 registered on April 28, 1998, in class 9.
The Panel finds that these registrations are sufficient for Complainant to establish rights in its mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that 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 the purposes of Policy ¶ 4(a)(i).”).
Further, Complainant argues that Respondent’s <radiomsn.net> domain name is confusingly similar to the MSN mark. Complainant notes that Respondent’s domain name contains its entire mark while adding the generic and descriptive term “radio” as well as the generic top-level domain (“gTLD”) “.net.” The Panel finds that the disputed domain name is indeed confusingly similar to Complainant’s MSN mark under Policy ¶ 4(a)(i) since the differences between the disputed domain name and the mark MSN are not sufficient to avoid a likelihood of confusion. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding 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 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).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant first notes that the WHOIS information identifies “Adinalzir Pereira Lamego” as the registrant of the domain name. Therefore, as such, Respondent is not commonly known by the domain name or Complainant’s MSN mark. Further, Complainant argues that Respondent is not licensed or authorized by Complainant to use the MSN mark in any way.
The Panel finds that Respondent does not seem to be 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 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent uses the domain name at issue in connection with a website that allows Internet users to download music and videos. Complainant alleges that Respondent uses Complainant’s Windows Live Messenger logo prominently throughout the website. Therefore, Complainant contends that Respondent is attempting to pass itself off as Complainant in order to gain Internet traffic and visitors to Respondent’s website. Complainant argues that such use of a confusingly similar domain name does not constitute 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).
The Panel deems that Respondent’s use of the disputed domain name does indeed not amount to 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). The domain name itself, plus the offering to download music and videos and the presence of the Messenger logo on the website creates confusion in the Internet user’s mind between Complainant, its services, and Respondent. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that respondent attempts to pass itself off as complainant online, which is blatant unauthorized use of complainant’s mark and is evidence that respondent has no rights or legitimate interests in the disputed domain name); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found respondent’s attempt to pass itself of as complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when respondent used the disputed domain name to present users with a website that was nearly identical to complainant’s website).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden has shifted to Respondent but the latter has not demonstrated its rights or legitimate interest.
Complainant argues that Respondent registered the domain name containing its well-known MSN mark, which was also well-known in Brazil where Respondent is located, with knowledge of Complainant’s use and rights in that mark. According to data provided by Complainant, MSN was one of the most popular brands online in 2010. The same year, Brazil appears to “also top the charts with the
highest percentage (86%) of Internet consumers visiting a social network”, according to data provided by Complainant. Even if the domain name was registered in 2008, it is likely that MSN was already an important brand online. Therefore, the Panel finds that it is likely that Respondent registered the disputed domain name with the well-known MSN trademark in mind. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that respondent had actual knowledge of complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where respondent was “well-aware” of complainant’s YAHOO! mark at the time of registration).
Complainant has also presented evidence that indicates that Respondent is using the disputed domain name to operate a website where Internet users are allowed to download music and video files. Complainant has also presented arguments and evidence to show that such use directly competes with Complainant’s offerings of music and video files through its official website <music.msn.com>.
Therefore, the Panel find that Respondent’s use of the disputed domain name disrupts Complainant’s online business by offering competing goods and services, and that such use is evidence of bad faith under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that respondent registered and used the <sportlivescore.com> domain name in order to disrupt complainant’s business under the LIVESCORE mark because respondent was maintaining a website in direct competition with complainant); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to respondent’s competing website).
Complainant also contends that Respondent may commercially profit from its competing use of the disputed domain name by hosting such a website. Complainant further notes that Respondent’s website uses Complainant’s logos and product names prominently throughout the website, which may confuse Internet users into thinking that Respondent is affiliated with, or sponsored by Complainant. The Panel finds that it is likely that Respondent has commercially profited from its confusing and competing use of the disputed domain name, having in mind that at least some Internet users may have believed that they were on Complainant’s official website, which is proof of bad faith use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that respondent’s use of the <arizonashuttle.net> domain name, which contained complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that complainant is the source of or is sponsoring the services offered at the site).
The Panel notes that Respondent declared in his response that “there was no bad faith or any action on my part that he intended to harm the claimant Microsoft Corporation”, but without explaining how both the registration and use could have been, in any way, in good faith. Therefore, Respondent’s arguments cannot be taken into account.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radiomsn.net> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: May 4th, 2011
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