Microsoft Corporation v. Robin Taylor
Claim Number: FA1105001389985
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas. USA. Respondent is Robin Taylor (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <msncamcrush.com>, <msncaminvite.com>, <msncamlink.com> and <windowslivecrush.com>, registered with Wild West Domains, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2011; the National Arbitration Forum received payment on May 20, 2011.
On May 24, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <msncamcrush.com>, <msncaminvite.com>, <msncamlink.com> and <windowslivecrush.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 May 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@msncamcrush.com, postmaster@msncaminvite.com, postmaster@msncamlink.com, postmaster@windowslivecrush.com. Also on May 24, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <msncamcrush.com>, <msncaminvite.com> and <msncamlink.com> domain names are confusingly similar to Complainant’s MSN mark.
Respondent’s <windowslivecrush.com> domain name is confusingly similar to Complainant’s WINDOWS LIVE mark.
2. Respondent does not have any rights or legitimate interests in the <msncamcrush.com>, <msncaminvite.com>, <msncamlink.com> and <windowslivecrush.com> domain names.
3. Respondent registered and used the <msncamcrush.com>, <msncaminvite.com>, <msncamlink.com> and <windowslivecrush.com> 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 operates its business under the MICROSOFT mark and holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MSN (e.g., Reg. No. 2,565,513 issued April 30, 2002) and WINDOWS (e.g., Reg. No. 1,872,264 issued January 10, 1995) marks.
Respondent, Robin Taylor, registered the <msncaminvite.com> and <windowslivecrush.com> domain names on May 11, 2009. Respondent registered the <msncamlink.com> and <msncamcrush.com> domain names on May 11, 2011. Each of the disputed domain names resolves to a website promoting adult-oriented material that is unrelated to Complainant’s computer business.
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 registered its MSN (e.g., Reg. No. 2,565,513 issued April 30, 2002) and WINDOWS marks (e.g., Reg. No. 1,872,264 issued January 10, 1995) with the USPTO. Because Complainant has registered the marks with a government trademark authority, Complainant has established rights in the marks. See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also 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.”). The Panel thus finds Complainant has established rights under Policy ¶ 4(a)(i) in the MSN and WINDOWS marks through its registrations with the USPTO.
Complainant contends that the <msncamcrush.com>, <msncaminvite.com>, and <msncamlink.com> domain names are confusingly similar to the MSN mark. Respondent added the generic term “cam” to each of the disputed domain names along with additional generic terms and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of these generic terms and a gTLD do not produce a unique domain name that falls outside the realm of confusing similarity with Complainant’s mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant alleges that the <windowslivecrush.com> domain name is confusingly similar to the WINDOWS mark. Respondent added the generic terms “live” and “crush” and the gTLD “.com” to Complainant’s mark. The Panel finds that the addition of these generic terms and gTLD to Complainant’s mark do not result in a unique domain name under Policy ¶ 4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); 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 that Policy ¶ 4(a)(i) has been established.
Complainant must make a prima facie showing in support of its allegation that Respondent lacks rights or legitimate interests in the disputed domain names. At this point, the burden shifts to Respondent to show it has rights in the domain names under Policy ¶ 4(a)(ii). 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.”). The Panel finds that Complainant has satisfied its burden and because Respondent failed to respond to these proceedings, the Panel is permitted to assume that Respondent lacks rights in the domain names under the Policy. However, the Panel elects to examine the record under Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent is not commonly known by any of the disputed domain names. The WHOIS information lists the registrant of the disputed domain names as “Robin Taylor” which Complainant alleges is not similar to any of the disputed domain names. The Panel, after considering the record, and the fact that Complainant never authorized Respondent to use the MSN or WINDOWS marks, finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant contends that each of the disputed domain names resolve to a website featuring adult-oriented video content. The Panel finds that this 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 Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a [adult-oriented] website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The Panel presumes that Respondent benefits financially for redirecting Internet users to the adult-oriented material that is featured on the websites resolving from the disputed domain names. Complainant alleges that Internet users are likely confused as to Complainant’s sponsorship of, and affiliation with the disputed domain names, resolving websites and featured content. The Panel finds that this use, for financial gain, is evidence that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post [adult-oriented] photographs and to publicize hyperlinks to additional [adult-oriented] websites evidenced bad faith use and registration of the domain name).
Complainant alleges that the disputed domain names each resolve to websites featuring adult-oriented material. The Panel finds that this is evidence of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii). See CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (“this association with an [adult-oriented] web site can itself constitute a bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msncamcrush.com>, <msncaminvite.com>, <msncamlink.com> and <windowslivecrush.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 20, 2011
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