national arbitration forum

 

DECISION

 

Microsoft Corporation v. hada c/o hada a/k/a hada c/o Jinbo Li

Claim Number: FA1109001407310

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is hada c/o hada a/k/a hada c/o Jinbo Li (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <msnlite.com> and <msn2.org>, registered with HiChina Zhicheng Technology Limited.

 

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.

 

Darryl C. Wilson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2011; the National Arbitration Forum received payment on September 14, 2011.

 

On September 15, 2011, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <msnlite.com> and <msn2.org> domain names are registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names.  HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 September 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@msnlite.com, postmaster@msn2.org.  Also on September 21, 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 October 24, 2011.

 

On October 28, 2011 an Additional Submission was received from Complainant and determined to be compliant with Supplemental Rule 7.

 

On November 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that it is the holder of a famous trademark, MSN, registered in the United States and in various other countries throughout the world. Complainant also contends that it owns an attendant MSN Messenger Logo that is similarly well known and comparably registered. Complainant asserts that the disputed domain names are confusingly similar to its famous MSN mark and that the domain names were chosen by Respondent for their association with the Complainant.

 

Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the domain names, or by Complainant’s MSN mark, and is not authorized to use Complainant’s MSN mark. Complainant further contends that Respondent has not used the disputed domain names in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use.

 

Complainant notes that Respondent’s websites offer competing messaging software that specifically references MSN and displays an imitation of Complainant’s MSN Messenger Logo. Complainant contends that Respondent registered the disputed domain names with knowledge of Complainant’s rights, and intended to create a false and misleading association with Complainant’s goods and services. Complainant argues that Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is evidence of bad faith registration and use.

 

B. Respondent

Respondent contends that while “.com” is a top-level domain and generic term, that is not true for “lite” because the latter is not a standard or even correctly spelled word. Respondent asserts “The use of this term is distinctive and, thus, makes the Domain Name in Dispute distinguishable from the Complainant’s MSN products.”

 

Respondent also claims the Complainant failed to provide evidence that the term lite was used to identify a feature-limited version of a software program and that MSNLite is a feature limited version of MSN. Respondent contends that for the “three reasons above” MSNLite is not identical or confusingly similar to MSN. Respondent additionally makes an effort to contend that Respondent has acquired secondary meaning in MSNLite.

 

Respondent further argues that the circumstances present “The Unlikelihood of Confusion” as well as “Good Faith Registration”. Respondent states that it registered the disputed domain names “because it owns, operates and develops a product called MSNLite. The name of MSNLite is distinctively different from MSN. Therefore, we have a legitimate interest in the Domain Name in Dispute, and our registration is not aimed to prevent Complainant from registration proper domain names for its own products or services.” Respondent contends that it is Complainant’s competitor and that the disputed domains were established to market and provide its product rather than to disrupt the business of the Complainant.

 

C. Additional Submissions

Complainant’s additional submission notes Respondent’s admission that it is a competitor using the disputed domain names for its product MSNLite to market software that competes with Complainant’s MSN Messenger and that Respondent is not merely using Complainant’s mark to compare products but has used Complainant’s mark to name its product. Complainant also disputes the Respondent’s characterization of the word “lite” as distinctive and instead asserts that it is a common description that is incapable of distinguishing the disputed domain name from Complainant’s mark.

 

FINDINGS

Complainant, Microsoft Corporation is a worldwide leader in software development that has been using the MSN trademark at least as early as 1995 and continuously since that time. MSN has been recognized as a well-known and world famous mark. Microsoft owns more than 40 United States (U.S.) registrations for MSN and related trademarks and more than 200 registrations throughout the world. Complainant’s global registrations include China where Respondent purportedly resides. Microsoft has used its MSN Messenger Logo since at least as early as 1997 and has continued to do so since that time. The logo is also registered in the U.S. and throughout the world.

 

Respondent appears to be an individual or entity located in Beijing, China. Respondent admits that it is a competitor of Complainant in developing and marketing software design and products. Respondent’s contentions regarding the distinctiveness of the word ”lite” are misplaced as that word’s use within the American lexicon is commonly construed as a generic misspelling of the word “light” that conveys the same meaning and therefore lacks distinctiveness. Respondent’s partial assertion to secondary meaning that it may have developed in the word “lite” in connection with the disputed domain name <msnlite.com>  was not supported by evidence of any type thus the Panel finds that Respondent cannot claim any rights to the use of the name on that basis.

 

Respondent initially agrees to the Complainant’s request to transfer the disputed domain name <msn2.org> to Complainant. As a result, the Panel finds that it is unnecessary to proceed with the traditional UDRP analysis in regards to that domain name and orders an immediate transfer of the <msn2.org> domain name from Respondent to Complainant. 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.”).

 

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."

 

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 alleges that it has established Policy ¶ 4(a)(i) rights in its MSN mark.  In Complainant’s Exhibit D, Complainant provides a list of its trademark registrations for the MSN mark with trademark agencies throughout the world, including with China’s State Administration for Industry and Commerce (“SAIC”) and the United States Patent and Trademark Office (“USPTO”):

 

Trademark Agency              Reg. No.                    Registration Date

SAIC                                      1,049,715                  July 7, 1997

SAIC                                      1,061,724                  July 21, 1997

SAIC                                      1,654,301                  October 21, 2001

SAIC                                      1,723,706                  February 28, 2002

SAIC                                      1,735,799                  March 21, 2002

SAIC                                      1,955,565                  August 21, 2002

SAIC                                      1,952,811                  August 21, 2002

SAIC                                      1,951,980                  August 21, 2002

SAIC                                      1,948,777                  August 21, 2002

USPTO                                  2,153,763                  April 28, 1998

USPTO                                  2,191,997                  September 29, 1998

USPTO                                  2,191,998                  September 29, 1998

USPTO                                  2,201,105                  November 3, 1998

USPTO                                  2,342,096                  April 18, 2000

USPTO                                  2,352,114                  May 23, 2000

USPTO                                  2,418,517                  January 9, 2001

USPTO                                  2,459,987                  June 12, 2001

USPTO                                  2,498,608                  October 16, 2001

USPTO                                  2,565,513                  April 30, 2002

USPTO                                  2,600,020                  July 30, 2002

USPTO                                  2,608,310                  August 13,2002

USPTO                                  2,854,091                  June 15, 2004

 

The Panel finds that Complainant’s trademark registrations with both the SAIC and the USPTO are sufficient to establish rights in its MSN mark under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant contends that the <msnlite.com> domain name is confusingly similar to Complainant’s MSN mark.  According to Complainant, the disputed domain name contains the combination of Complainant’s MSN mark, the generic top-level domain (“gTLD”) “.com,” and the generic term “lite”. Complainant argues that these alterations to its MSN mark are insufficient to adequately differentiate the disputed domain name from Complainant’s mark.  The Panel agrees with Complainant and holds that Respondent’s <msnlite.com> domain name is confusingly similar to Complainant’s MSN mark pursuant to Policy ¶ 4(a)(i).  See 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); 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 Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark).

 

Complainant has proven this element.

 

 

Rights or Legitimate Interests

 

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), and that the burden shifted 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name);

 

Complainant claims that Respondent is not commonly known by the <msnlite.com> domain name.  The WHOIS information identifies the registrant of the disputed domain name as “hada c/o hada a/k/a hada c/o Jinbo Li.”  Complainant states that Respondent is not licensed to use Complainant’s MSN mark and that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.  Based on this evidence, the Panel finds that Respondent is not commonly known by the <msnlite.com> domain name under Policy ¶ 4(c)(ii).  See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant alleges that Respondent’s <msnlite.com> domain name resolves to a <msnlite.org> website that offers messaging software that competes with Complainant’s messaging software.  Complainant presents screen shots that support its allegations and Respondent admits that it is competing with Complainant. The Panel finds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names by using them to promote and offer competing products.  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the MSN mark.  Respondent does not dispute Complainant’s contentions regarding the fame of its mark or the awareness of Complainant’s business. Respondent further admits that it is trying to get customers to switch from using Complainant’s products to Respondents. Although constructive notice, based on the registration of trademarks, is recognized in some jurisdictions it has not been generally held to suffice for a finding of bad faith registration and use under the UDRP. However, since the Complainant is known as the global leader in its field and the Respondent is operating in the same field by trying to attract Complainant’s customers through the offer of products that incorporate Complainant’s registered MSN trademark the Panel finds that Respondent had actual notice of Complainant’s trademark and registered, and is using, the disputed domain name in bad faith under Policy ¶ 4(a)(iii.  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 the respondent had actual knowledge of the 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 the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

Complainant contends and Respondent admits that it competes with Complainant for the same goods and services. Complainant further contends that Respondent’s registration and use of the <msnlite.com> domain name to offer competing instant messaging products disrupts Complainant’s business. The Panel agrees and finds that Respondent registered and uses the <msnlite.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also 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).”).

 

Complainant has proven this element.

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <msnlite.com> and <msn2.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Prof. Darryl C. Wilson, Esq. Panelist

Dated:  November 15, 2011

 

 

 

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