Microsoft Corporation v. World Media Service
Claim Number: FA0903001254446
PARTIES
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <videomsn.com>, registered with Godaddy.com, Inc.
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2009.
On March 27, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <videomsn.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 20, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@videomsn.com by e-mail.
A timely Response was received and determined to be complete on April 20, 2009.
Complainant submitted an Additional Submission to the National Arbitration Forum on April 21, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7. The Panel has taken the supplemental filing into account in rendering its Decision. In response to the aforesaid Additional Submission, Respondent sent the FORUM an Additional Submission on April 27, 2008. Because this filing complied with the timeliness requirements of Supplemental Rule 7(c), and the Panel received that filing before it began its deliberations, it will also consider said filing in formulating the opinion below.
On
April 27, 2009, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1975, Complainant has manufactured, marketed and sold computer software and related products and services on a worldwide basis. Complainant is the owner of numerous proprietary marks for its goods and services, including the mark MSN, which has been in use since at least 1995.
Complainant has registered the MSN trademark with the United States Patent and Trademark Office (the “USPTO”), and elsewhere around the world. Many of Complainant’s forty-five USPTO registrations for said mark describe goods and services related directly to “video.”
The domain name, <msn.com>, owned by Complainant, is one of the most visited on the Internet.
Respondent registered the disputed domain name, <videomsn.com>, which is confusingly similar to Complainant’s trademark, MSN. The name incorporates Complainant’s full mark, adding only the term “video,” which describes goods and services delivered by Complainant.
Respondent has no rights or legitimate interests in the domain name at issue. Respondent is not commonly known by Complainant’s mark, MSN, nor has Respondent used the name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use the famous MSN mark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
Respondent registered the disputed domain name to divert Internet users to its own website, which promotes streaming video and video conferencing services.
Respondent registered and is using the disputed domain name in bad faith. Clearly, Respondent was aware of Complainant’s famous mark, MSN. Respondent purposefully selected a domain name incorporating that mark to draw traffic to its own commercial website, with the intent to mislead or confuse consumers as to the source or affiliation of that website.
Respondent has attempted to benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s well-known mark.
B. Respondent
The disputed domain name, <videomsn.com>, is not confusingly similar to Complainant’s MSN mark. The name in comprised of two distinct terms, “video” and “msn,” which both relate to Respondent’s business, “video marketing support network.”
There is no mention of, or link to, Complainant on Respondent’s website found at the disputed domain name. No Internet users have ever queried Respondent about any association between that website and Complainant.
If there is any confusion, it is because Complainant initiated a website at the domain name, <video.msn.com>, in 2007, four years after Respondent registered the disputed domain name in 2003.
Respondent’s rights and legitimate interests in the domain name in question arise from Respondent’s use of the name since 2003, nearly six years before notice of this Complaint, for the selling of its own video-related products. Respondent has many reputable customers, including eBay and SNS Bank.
Respondent does not sell, directly or indirectly, Complainant’s products or the products of third parties. Respondent has received several prestigious European awards for the marketing of its products.
Respondent’s products do not compete with those of Complainant. Respondent’s products and services include integrated text, audio and video based online Internet solutions for interactive, multi-channel marketing, advertising, sales and support businesses. In no way does Respondent intend to mislead Internet users or divert them from Complainant’s goods and services.
Respondent neither registered nor is using the disputed domain name in bad faith. Respondent did not register the name with the intent to sell it, but with the intent to sell Respondent’s products.
Respondent could not anticipate that Complainant would register the domain name, <video.msn.com>, four years after registration of the disputed domain name. That is the source of any true Internet user confusion.
As Respondent and Complainant are in different businesses and there is no mention of Complainant on Respondent’s website, Respondent did not intend to use Complainant’s MSN mark to promote Respondent’s business and thus cannot be accused of bad faith in registration and use of the disputed domain name.
Respondent does not intend to disrupt Complainant’s business.
C. Complainant’s Additional Submission
The fact that Respondent registered <videomsn.com> before Complainant registered <video.msn.com> is irrelevant, because Complainant’s rights in this case stem from its ownership of the mark MSN, whose ownership and fame Respondent does not dispute.
Moreover, the age of Respondent’s registration of the disputed domain name is also irrelevant. Delay in challenging a domain name is not a valid defense in a UDRP proceeding.
Respondent’s claim that its products are not similar to those offered by Complainant is not credible. Respondent’s website offers, among other things, video conferencing with live chat, customer relationship management software, video conferencing for university students and web conferencing. Complainant offers MSN branded chat and video conferencing and streaming software and services; and has a major division that provides customer relationship management software.
Respondent uses the disputed domain name to divert Internet users to a website that features completely different and unrelated business names, i.e., World Media Service and AdviceSoft. All of the awards Respondent claims to have won are associated with those names, not any variation of the disputed domain name. Moreover, the clients that Respondent cites are identified as customers of businesses with said other names. As such, Respondent’s use of the disputed domain name is not bona fide or legitimate.
Respondent’s assertion that “videomsn” stands for “video marketing support network” is disingenuous and an after-the-fact rationalization designed to deflect infringement of Complainant’s famous mark. The above-referenced phrase is never found on Respondent’s website nor anywhere else over the internet.
D. Respondent’s Additional Submission
An Internet search of the phrase “video marketing support network” returns about 17 million web pages, few of which relate to Complainant.
Complainant has registered over 50 domain names that incorporate “.msn.com,” and should be restricted to claiming rights in only domain names that have a period before “msn” and not all names that include those three letters together.
The fact that the disputed domain name does not mirror Respondent’s company name is irrelevant. Domain names commonly do not correspond to the name of the registering company and are still valid. For instance, Complainant has registered, <live.com>, which is unrelated to Complainant’s company name, Microsoft. Similarly, <msn.com>, is not the same as Microsoft.
Paper documents sent by Respondent to its clients constantly refer to the disputed domain name, so there is no intended deception.
Respondent has used the phrase, “video marketing support network,” on its support cards, on product descriptions and in live presentations.
FINDINGS
Starting operations in 1975, Complainant has become one of the most famous companies in the world, and one of the most dominant names associated with computers and the Internet. Complainant’s mark, MSN, is world famous, and Complainant holds many valid trademark registrations for that mark throughout the world, including with the USPTO (e.g., Registration No. 2,153,763; April 28, 1998). Among its many products and services, Complainant provides various online video marketing and conferencing services.
Respondent registered the disputed domain name, <videomsn.com>, on September 25, 2003. Respondent uses the name for its website, which offers various video marketing and conferencing services.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The submission of evidence confirming USPTO trademark registration of its MSN mark by Complainant convinces the Panel that Complainant has valid rights in that mark. See Microsoft Corp. v. Stephan Burkes d/b/a MicrosoftZone.Com, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Intel Corp. v. M. Macare a/k/a M. Macar, FA 660685 (Nat. Arb. Forum Apr. 26, 2006).
Obviously, the
disputed domain name, <videomsn.com>,
is not identical to the mark MSN.
However, the minor additions to that mark found in the name do not
prevent the Panel from rendering a finding that the name is confusingly similar
to the mark. Because elements of
Complainant’s business involve video transmissions, consumer confusion is
inevitable, as the additional generic term “video” is clearly descriptive of
Complainant’s operations. Moreover, the
additional term “.com” is merely one of the acceptable domain suffixes
necessary for Internet usage, and thus not a pertinent basis for
distinction. Many UDRP panels have found
confusing similarity in comparable circumstances, and the Panel sees no
rationale to deviate from this reasoning.
See Arthur Guinness Son & Co.
(
Respondent submits a hopelessly flawed contention that confusion arises in this case solely because Complainant registered the domain name <video.msn.com> some years after Respondent’s registration and use of the domain name at issue, <videomsn.com>. Yes, the Panel notes that those two domain names are confusingly similar. However, both domain names are also confusingly similar to the pre-existing trademark, MSN, standing alone. Since Complainant has successfully established its rights in that mark, its subsequent domain name acquisitions have no bearing on its challenge to Respondent’s rights to the disputed domain name in a UDRP proceeding.
The Panel finds that Complainant has prevailed as to paragraph 4(a)(i) of the Policy.
Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden to go forward on this issue to Respondent. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com (Clerical & Medical Services Agency), D2000-1228 (WIPO Nov. 28, 2000); see also Hanna-Barbera Prod., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (“Before shifting the burden to Respondent, 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).”). Complainant’s unassailable demonstration of rights in its mark, MSN, and its assertion that it has not authorized Respondent to use that mark establish a prima facie case that necessitates rebuttal from Respondent.
Despite Respondent’s assertion that <videomsn.com> stands for “video marketing support network,” Respondent makes no serious contention that it is commonly known as the disputed domain name. Therefore, the Panel concludes that Policy paragraph 4(c)(ii) cannot be invoked to suggest that Respondent has rights and legitimate interests in that name. Similarly, Respondent’s admission that it derives significant commercial gain from the sale of services under the disputed domain name prohibits application by the Panel of paragraph 4(c)(iii) – requiring noncommercial or fair use of a disputed domain name – on behalf of Respondent.
Respondent’s principle contention in this regard is that it has used the disputed domain name since 2003, years before this Complaint was filed, in the “bona fide offering of goods and services” per paragraph 4(c)(i) of the Policy. However, whether or not the goods and services marketed by Respondent are related to those offered by Complainant, the Panel cannot conclude that this amounts to a bona fide offering because it involves the use of Complaint’s world famous trademark as a substantial (if not dominant) part of the disputed domain name. The Panel cannot help but believe that the Respondent, whose company name is wholly different from the domain name in question, is using that name to attract Internet users who are looking for goods or services supplied by Complainant. The fact that Respondent may have received several prestigious awards for its operations does not, in the Panel’s view, negate the infringing nature of its use of the disputed domain name. Thus, the Panel concludes that Respondent fails to sustain its case by application of paragraph 4(c)(i). See, e.g., Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, Jan. 7, 2002) (“Respondent uses the <nikebats.com> domain name to redirect Internet users to its website, where it sells sports merchandise. This commercial activity is in the same field as Complainant, who also merchandises sports products, and as such Respondent’s use of the disputed domain name is not a bona fide offering of goods or services, and Policy ¶ 4(c)(i) does not apply.”); see also U.S. Franchise Sys., Inc. v. Howell III, FA 152457 (Nat. Arb. Forum, May 6, 2003) (“Using Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)”); see also Lee Xongwei, supra.
Finally, having failed to effectively utilize the criteria outlined in paragraph 4(c), Respondent has supplied the Panel with no other feasible rationales to support its claim to rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has prevailed as to paragraph 4(a)(ii) of the Policy.
Given the analysis set forth in the preceding section, it logically follows that Respondent has registered and is using the disputed domain name in bad faith. As stated above, the Panel believes that Respondent has purposely selected that name to gather increased Internet traffic based on the attraction to Respondent’s website of Internet users who assume that the disputed domain name is affiliated with Complainant and its goods and services.
Respondent has in effect usurped the rationale behind creating and promoting a trademark like MSN so that consumers will identify it with the goods and services of the company that owns it. Furthermore, Respondent has averred clearly that the disputed domain name is used for its commercial gain, since Respondent boasts about the quality of the customers using its website. As such, the Panel determines that Respondent’s actions fit neatly into the circumstance calling for a finding of bad faith per paragraph 4(b)(iv) of the Policy, i.e., “by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on your web site or location.” See, e.g., V Secret Catalogue, Inc. v. Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Teammsn, supra (“The Panel finds that Respondent is confusing Internet users by implying a relationship between its website and Complainant when no such relationship exists, and that Respondent is taking advantage of this confusion for its own commercial gain. Use of the disputed domain names in this fashion constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has prevailed as to paragraph 4(a)(iii) of the Policy.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <videomsn.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: May 11, 2009
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