Microsoft Corporation v. Brain Robinson
Claim Number: FA1105001390938
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Brain Robinson (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dvdmsn.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2011; the National Arbitration Forum received payment on May 27, 2011.
On May 28, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <dvdmsn.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.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 June 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@dvdmsn.com. Also on June 2, 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 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Microsoft is the owner of numerous proprietary trademarks for these goods and services, including the famous mark MSN®. Microsoft began using the MSN trademark at least as early as 1995, and has used the trademark continuously since then. Among other things, Microsoft operates the MSN® portal which provides an Internet search engine, as well as news, e-mail, instant messaging, and other services, including movies, television and other entertainment. These services include the ability to browse and purchase various products on DVD. MSN has been reported to be one of the most frequently visited sites on the Internet.
Prior ICANN panelists have found that MSN is a well-known and world famous mark. See, e.g., Microsoft Corp. v. World Media Service, FA 1254446 (Nat. Arb. Forum May 11, 2009); Microsoft Corp. v. Cupcake City, WIPO Case No. D2000-0818 (2000); Microsoft Corp. v. Stop2Shop a/k/a Gene Vozzola, WIPO Case No. D2004-0510 (2004); Microsoft Corp. v. Marine Safety Network Weather, FA 655480 (Nat. Arb. Forum April 26, 2006); Microsoft Corp. v. Daniel Kaufman, NAF Case No. FA 1213955 (Nat. Arb. Forum 2008); and Microsoft Corp. v. Hakan Karabidek, DMD2010-0003 (WIPO October 28, 2010)(recognizing the “fame and substantial reputation in the [MSN] mark”).
Microsoft owns more than 25 United States registrations for MSN and related trademarks, and more than 200 registrations throughout the world. Microsoft used and internationally registered the trademark MSN long prior to the registration date for the disputed domain name. See also Microsoft Corp. v. Daniel Kaufman, FA 1213955 (Nat. Arb. Forum 2008) (finding that Complainant’s MSN mark is known throughout the world and is registered with other governmental trademark authorities worldwide).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to Complainant’s famous MSN trademark.
The disputed domain incorporates Complainant’s famous MSN mark in its entirety, along with the generic term “dvd,” and the generic TLD .com. These differences are insufficient to avoid confusion, especially where the disputed domain incorporates a famous mark combined with terms relating to Complainant’s business. See Microsoft Corp. v. Tan Kim Fong et al. FA 1265720 (Nat. Arb. Forum July 14, 2009)(finding <msnphoto.com> confusingly similar to MSN and noting, “[t]he Panel finds the additions of generic or descriptive terms relating to Complainant’s business … fail to distinguish the disputed domain names from Complainant’s MSN mark pursuant to Policy ¶4(a)(i)”); Microsoft Corp. v. John S. Dalton, FA 747780 (Nat. Arb. Forum August 23, 2006)(finding <searchmsn.com> confusingly similar to Complainant’s MSN mark and noting that “the mere addition of a term describing Complainant’s business does nothing to differentiate the disputed domain name from Complainant’s registered MSN mark”); Microsoft Corp. v. Teammsn, FA 648204 (Nat. Arb. Forum March 27, 2006) (finding <teammsn.com> confusingly similar to MSN because it incorporated Complainant’s mark in its entirety along with a descriptive term and a top-level domain); and Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA 1254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
For the above reasons, the disputed domain name is confusingly similar to Complainant’s MSN mark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. 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.
WHOIS identifies Respondent as Brain Robinson. Respondent is not commonly known by Complainant’s MSN mark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s trademarks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain resolves to website that displays the MSN mark in a different color than the word DVD, followed by a replica of Microsoft’s “butterfly logo” which is also associated with Microsoft’s MSN mark where Respondent sells various television, movie and other entertainment DVDs shipped from either China or Hong Kong. The display of the MSN and butterfly logo is clearly a copy of Complainant’s famous MSN logo.
Respondent obtains compensation from its improper use of the disputed domain name. This is not a use in connection with 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). U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum, May 6, 2003) (Respondent’s use of Complainant’s mark and the goodwill surrounding the mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services). See also, Victoria’s Secret Stores Brand Management, Inc. v. Petre Nicoara, FA 1377177 (Nat. Arb. Forum, Apr. 15, 2011) (finding that use of the disputed domain name, which is confusingly similar to Complainant’s mark, to offer for sale products in competition with Complainant’s products is not a use which is 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)) and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [Complainant’s] … mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.
See also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶4(c)(i) or (iii) because that respondent used the domain name to take advantage of a complainant's mark by diverting Internet users to a competing commercial website).
Respondent has taken Complainant’s MSN trademark without authorization in order to misleadingly and deceptively divert Internet users to its web site for commercial gain. The use of a domain name that is confusingly similar to Complainant’s famous trademark to attract consumers to Respondent’s own website is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). See Microsoft Corp. v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum, October 6, 2004). “The Respondent’s use is little more than the use of a famous trademark to divert traffic to…itself.” Microsoft Corp. v. Whois Privacy Protection Service/Lee Xongwei, D2005-0642 (WIPO October 12, 2005) (finding no rights or legitimate interests in the domain name <msnmoney.com>).
Furthermore, Respondent’s web site prominently displays Complainant’s registered MSN and butterfly logo, and no indication of source is provided other than Complainant’s trademarks. This is calculated and likely to cause confusion, and is not a legitimate use. See Microsoft Corp. v. Francesco Pennisi, FA0908001280894 (Nat. Arb. Forum Sep. 29, 2009)(finding no legitimate use where the respondent offered video chat services and displayed Complainant’s MSN logo); Microsoft Corp. v. Adinalzir Pereira Lamego, FA1103001380726 (Nat. Arb. Forum May 4, 2011)(finding no legitimate use based in part on the presence of Complainant’s MSN Messenger Logo at Respondent’s web site); Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010)( “Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is 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)”); Microsoft Corp. v. Evgeny I Viktorov c/o Private Person, FA0909001285127 (Nat. Arb. Forum Nov. 11, 2009)(“Respondent’s attempt to use the <zunecenter.com> domain name to ‘pass off’ Respondent’s website as Complainant’s website, and then sell competing products, is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); and Mulberry Company (Design) Ltd. v. ronld chen AKA chen, ronld, D2010-1718 (WIPO Nov. 26, 2010)(noting: “[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services.”).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the domain name, the MSN mark had been in use for many years and was well known and famous, and certainly familiar to countless consumers. It is clear that Respondent was not only familiar with the MSN Mark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating the MSN Mark in order to create an association with Complainant and its services. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in its well-known MSN Mark is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Respondent’s purposeful selection of a domain name incorporating the MSN Mark in connection with a site that uses Microsoft’s trademarks and sells product shows intent to mislead or confuse consumers as to the source or affiliation of this website. This is exacerbated by Respondent’s use of the Microsoft “butterfly logo” and the use of a copyright notice that merely states “Copyright © 2011 DVDMSN”. See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the 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); and MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Respondent has attempted to benefit, unfairly and opportunistically, from the goodwill associated with the MSN Mark, and this conduct of diversion, which is also motivated by commercial gain, shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004).
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 trademark as to the source, sponsorship, affiliation, or endorsement of third party products and services. This constitutes bad faith under §4(b)(iv) of the Rules. See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004).
Furthermore, by incorporating Complainant’s famous trademark into the disputed domain, and using Complainant’s distinctive logos at the corresponding web site, Respondent creates the false impression of a site that originates with or is sponsored by Complainant. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS v. Robertson. See also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); MidFirst Bank v. Adam Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009)(use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith); and DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that a respondent’s bad faith use of the title “Dodgeviper.com Official Home Page” gave consumers the misimpression that the complainant endorsed and sponsored a respondent’s website).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Microsoft Corporation was founded in 1975 as a provider of software and related services and business solutions. Complainant owns the MSN mark which it began using as early as 1995 in connection with its Internet search engine as well as providing news, e-mail, instant messaging, television, movies, etc. Complainant holds numerous trademark registrations for the MSN mark with the USPTO (e.g., Reg. No. 2,153,763 issued April 28, 1998).
Respondent Brain Robinson registered the <dvdmsn.com> domain name on October 19, 2008. The disputed domain name resolves to Respondent’s website which displays the MSN mark as well as a replica of Complainant’s “butterfly logo” associated with the MSN mark. The resolving website sells various television, movie, and other entertainment DVDs.
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 Complainant to 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 claims it has demonstrated its rights in the MSN mark. Past panels have decided a complainant can confirm rights in a mark through trademark registration with a national trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the 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 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).”). Complainant holds a number of trademark registrations with the USPTO for its MSN mark (e.g., Reg. No. 2,153,763 issued April 28, 1998). Thus, this Panel concludes Complainant has established its rights in the MSN mark by registering with a trademark authority pursuant to Policy ¶4(a)(i).
Complainant also argues Respondent’s <dvdmsn.com> domain name is confusingly similar to its MSN mark. The disputed domain name utilizes the entire MSN mark and only changes it by adding the descriptive term “dvd” and the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a descriptive word, which references the portion of Complainant’s business in movies and television, does not sufficiently distinguish the domain name from the registered trademark. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶4(a)(i).”). The Panel also finds affixing a gTLD does not properly distinguish the disputed domain name from Complainant’s mark. See 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 concludes Respondent’s disputed domain name is confusingly similar to Complainant’s MSN mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant alleges Respondent lacks rights and legitimate interests in the disputed domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the Panel found 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.” Here, Complainant has made a prima facie showing. Respondent failed to respond to the Complaint, which may be interpreted as a waiver to any claim of rights or legitimate interests under Policy ¶4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will look to the record to decide whether Respondent has rights or legitimate interests under Policy ¶4(c).
Complainant asserts Respondent is not commonly known by the <dvdmsn.com> domain name. The WHOIS information identifies the domain name registrant as “Brain Robinson,” which is not similar to the disputed domain name. Complainant has not licensed or authorized Respondent to use its MSN mark in any way. The Panel concludes Respondent is not commonly known by the disputed domain name, under Policy ¶4(c)(ii), because nothing in the record indicates otherwise. 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 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).
Respondent’s <dvdmsn.com> domain name redirects to its own website which sells various television and movie entertainment DVDs. The Panel finds Respondent’s use of the confusingly similar disputed domain name to further its own business interests 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. 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).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Additionally, Respondent is attempting to pass itself off as affiliated with Complainant. The resolving website includes Complainant’s MSN mark followed by a replica of Complainant’s Microsoft “butterfly logo,” which is also associated with Complainant’s MSN mark. The Panel finds Respondent’s attempt to pass its website off as Complainant is further evidence it lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
While Complainant does not specifically make the argument, Respondent’s <dvdmsn.com> domain name may disrupt Complainant’s business based upon the facts presented. Internet users intending to utilize Complainant’s movie, television, and entertainment services may find Respondent’s website and purchase similar goods and services from Respondent instead. The Panel finds Respondent’s registration and use of the disputed domain name does disrupt Complainant’s business under the MSN mark and constitutes bad faith pursuant to Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”; see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant argues Respondent registered and is using the <dvdmsn.com> domain name in order to create a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and products sold. The resolving website includes Complainant’s MSN mark and a replica of Complainant’s Microsoft “butterfly logo,” and also sells entertainments goods and services similar to those offered by Complainant under its MSN mark. Respondent attempts to profit from the confusion among Internet users by selling various television and movie DVDs. The Panel concludes Respondent’s disputed domain name was registered and is being used in bad faith under Policy ¶4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <dvdmsn.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: June 28, 2011
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