Microsoft Corporation v. juergen thirds
Claim Number: FA1307001509789
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is juergen thirds (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msnusers.com>, registered with ENOM373 INCORPORATED.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2013; the National Arbitration Forum received payment on July 16, 2013.
On July 17, 2013, ENOM373 INCORPORATED confirmed by e-mail to the National Arbitration Forum that the <msnusers.com> domain name is registered with ENOM373 INCORPORATED and that Respondent is the current registrant of the name. ENOM373 INCORPORATED has verified that Respondent is bound by the ENOM373 INCORPORATED 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 July 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2013 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@msnusers.com. Also on July 19, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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:
1. Respondent’s <msnusers.com> domain name is confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <msnusers.com> domain name.
3. Respondent registered and uses the <msnusers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered its MSN mark with the United States Patent and Trademark Office ("USPTO") for e-mail and online services (see USPTO Reg. No. 2,153,763 registered on April 28, 1999.)
Respondent registered the <msnusers.com> domain name on May 4, 2013, and uses it to host a generic hyperlink advertising website. Some of the services advertised compete with Complainant’s 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."
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.
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.”).
The Panel finds that Complainant’s USPTO is satisfactory evidence of Policy ¶ 4(a)(i) rights in its MSN mark, despite Respondent’s residence in Germany. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <msnusers.com> domain name is confusingly similar to the MSN mark, as it merely adds the descriptive term “users” to the mark, and the irrelevant gTLD “.com.” These changes do not distinguish the disputed domain name form 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.”); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Thus, the Panel finds that the <msnusers.com> domain name is confusingly similar to the MSN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 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); 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 argues that Respondent is not commonly known by Complainant’s mark or the <msnusers.com> domain name. Complainant states that he WHOIS information listed “Wolfgang Sauer” as the registrant of <msnusers.com> prior to the filing of this dispute. Complainant now claims that Respondent changed the WHOIS information to “juergen thirds” after receiving notice of this proceeding. Neither of those listings bears any resemblance to the disputed domain name. Complainant has not authorized or licensed Respondent’s use of the MSN mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent uses the <msnusers.com> domain name to get Internet users to download files set up by Respondent, and to prompt Internet users to download unauthorized updates for Complainant’s products. Complainant claims that these downloads contain whatever files Respondent wishes to force onto the computers of unsuspecting Internet users. The Panel finds that the use of the disputed domain name to host malicious or unwanted software downloads constitutes neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Complainant notes that the <msnusers.com> domain name is also a generic hyperlink advertising website. Complainant claims that some of the services advertised compete with Complainant’s business under the MSN mark. The Panel notes that the hyperlinks available on the <msnusers.com> domain name’s website are generic in nature, and do not appear to be competitive with the MSN mark. Nonetheless, the Panel finds that the use of the <msnusers.com> domain name to host unrelated hyperlinks does not create a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Complainant next argues that Respondent uses Complainant’s logos and icons to pass itself off as Complainant in offering its bloatware and malicious software to Internet users. The Panel notes that Respondent purports to offer Complainant’s “Internet Explorer” update services through the domain name’s website. The Panel finds that Respondent is passing itself off as Complainant and lacks rights and legitimate interests 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).
Complainant also notes that Respondent is offering the <msnusers.com> domain name for sale, illustrating that it does not have a right or legitimate interest in the domain name. The Panel notes that the domain name’s hyperlink advertisement page includes a notice to “Make an offer,” which takes Internet users to a DomainSponsors.com, LLC, form where the Internet user may bid for the <msnusers.com> domain name. The Panel finds that the general offer of sale constitutes additional evidence that Respondent has no rights or legitimate interests in the domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is offering the disputed domain name for sale to the general public. In CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000), the panel expressed the now long-held principle that a general offer of sale can constitute bad faith under Policy ¶ 4(b)(i). The Panel finds that Respondent’s request for bids on the <msnusers.com> domain name illustrates Policy ¶ 4(b)(i) bad faith use and registration.
Complainant contends that Respondent has been subject to numerous prior UDRP decisions under its “Wolfgang Sauer” alias, citing various UDRP decisions to support its contentions. See Allison Wing c/o Ali Wing, Inc. v wolfis.com c/o Wolfgang Sauer, FA0603000655492 (Nat. Arb. Forum April 25, 2006); American Musical Theatre of San Jose, Inc. v. Wolf Internet Services LDC c/o Wolfgang Sauer, FA0609000797527 (Nat. Arb. Forum Oct. 30, 2006); LFP IP, LLC and LFP Casino IP, LLC v. Wolf Internet Services LDC c/o Wolfgang Sauer, FA0802001143990 (Nat. Arb. Forum Apr. 7, 2008); State Farm Mutual Automobile Insurance Company v. Wolf Internet Services LDC c/o Wolfgang Sauer, FA0906001269935 (Nat. Arb. Forum July 31, 2009); Google Inc. v. Wolfgang Sauer / W.B. Sauer / Wolf Internet Services LDC / Keith Carpenter, FA1202001430759 (Nat. Arb. Forum Apr. 17, 2012); and Société des Produits Nestlé SA v. Wolf Internet Services LDC, Wolfgang Sauer, D2008-1626 (WIPO Dec. 22, 2008). In Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) the panel found multiple UDRP proceedings against a respondent, and held that these proceedings established Policy ¶ 4(b)(ii) bad faith. The Panel accepts the contention that both of the listed WHOIS registrants are aliases for Respondent, and finds that there is Policy ¶ 4(b)(ii) bad faith use and registration.
Respondent is disrupting Complainant’s business by promoting competing hyperlinks, and urging Complainant’s customers to install viruses and malicious software onto their electronic devices. In Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007), the panel held that the use of a domain name to provide content that resembled that of the complainant’s website, in an attempt to disrupt the complainant’s business, was an act of bad faith use and registration. The Panel finds that Respondent’s use of the disputed domain name constitutes Policy ¶ 4(b)(iii) bad faith use and registration.
Respondent also uses Complainant’s logos and creates a likelihood that Internet users will believe that Complainant has approved and endorsed Respondent’s website. Respondent profits from this confusion when Internet users are redirected to a hyperlink directory, and to software downloads. The Panel finds that Respondent’s use of the disputed domain name constitutes Policy ¶ 4(b)(iv) bad faith. See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010), where the panel held the presence of a confusing download feature (which installed malicious software onto the user’s device) was evidence of a Policy ¶ 4(b)(iv) bad faith use and registration; see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); 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).
Complainant more broadly alleges that Respondent’s use of the <msnusers.com> domain name in a scheme to deliver malicious software to Internet users’ electronic devices is in itself evidence of bad faith. The Panel agrees and finds additional evidence of Policy ¶ 4(a)(iii) bad faith use and registration. See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Complainant finally claims that Respondent knew of Complainant’s trademark rights in MSN before registering the disputed domain name, evident through Respondent’s usage of Complainant’s marks and logos in marketing its software downloads. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s MSN mark, further evidence of bad faith under Policy ¶ 4(a)(iii). See 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msnusers.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 25, 2013
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