Microsoft Corporation v. Teammsn
Claim Number: FA0602000648204
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225. Respondent is Teammsn (“Respondent”), da-yan-ta, xian 710000, CN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <teammsn.com>, registered with Tucows Inc.
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 February 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2006.
On February 17, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <teammsn.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 February 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2006 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@teammsn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2006, 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." 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 <teammsn.com> domain name is confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <teammsn.com> domain name.
3. Respondent registered and used the <teammsn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured, marketed, and sold computer software and related products and services since 1975. Complainant began using the MSN mark in connection with its Internet services in 1995, and has used the mark continuously in commerce since then. Complainant has registered the MSN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. no. 2,191,997 issued April 28, 2004). Complainant has also registered several domain names, including <msn.com> and <msn.net>, which it uses in connection with its products and services.
Respondent registered the <teammsn.com> domain name on March 15, 2005. Internet users who access this domain name are directed to a website selling software for use with one of Complainant’s MSN Messenger product. This website includes several references to Complainant’s MSN Messenger product, as well as a link to one of Complainant’s websites. However, Complainant asserts that it has not authorized Respondent to use its MSN mark for any purpose.
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 has established rights in the MSN mark, pursuant to Policy ¶ 4(a)(i), through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s <teammsn.com> domain name is confusingly similar to Complainant’s MSN mark because it incorporates Complainant’s mark along with a descriptive term, and the top-level domain “.com.” The Panel finds that the mere addition of a descriptive term to Complainant’s registered mark does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Additionally, since all domain names require a top-level domain, the addition of “.com” to Complainant’s mark fails to distinguish Respondent’s domain name from the mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <teammsn.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, Complainant’s assertions are unopposed, and the Panel will evaluate the evidence to determine if Respondent has rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent’s <teammsn.com> domain name is
confusingly similar to Complainant’s MSN mark, and directs users to a website
featuring several references to Complainant’s MSN Messenger product, as well as
a link to Complainant’s website.
Respondent uses its website to sell software specifically for use with
Complainant’s MSN Messenger product, and even requires Internet users to be
registered for one of Complainant’s services before downloading software from
Respondent’s website. Respondent’s use
of Complainant’s MSN mark in its domain name and on its website may confuse
Internet users about the relationship between Complainant and Respondent. Complainant asserts that no such
relationship exists. The Panel
determines that Respondent registered the <teammsn.com> domain
name to mislead Internet users into inferring that Respondent’s website was
related to Complainant. Such use of the
domain name is not 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). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also 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).”).
Complainant asserts that it does
not permit unaffiliated entities to use the MSN mark in their company
names. While the WHOIS database lists
Respondent as “Teammsn,” the copyright notice in Respondent’s website lists the
copyright holder for the site as “Luggersoft Co., LTD.” Respondent has not offered affirmative proof
that Respondent is commonly known by the <teammsn.com> domain
name. The Panel finds that Respondent
has no rights or legitimate interests in this domain name under Policy ¶
4(c)(ii). See
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the domain name precede
the respondent’s registration; (3) the respondent is not commonly known by the
domain name in question); see also Yoga Works, Inc. v. Arpita, FA
155461 (Nat. Arb. Forum June 17, 2003)
(finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <teammsn.com> domain name,
which is confusingly similar to Complainant’s MSN mark, to sell its own
software products to Internet users.
The Panel infers that Respondent, like Complainant, is in the business
of selling computer software. Respondent
sells its software products specifically for use with Complainant’s MSN Messenger
product, and also makes numerous references to Complainant’s MSN Messenger
product on its website. Furthermore,
Respondent requires Internet users to be registered users of Complainant’s
services before downloading any of its products. 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). See
World Wrestling Fed’n Entm’t, Inc. v.
Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the
respondent registered and used the <wwfauction.com> domain name in bad
faith because the name resolved to a commercial website that the complainant’s
customers were likely to confuse with the source of the complainant’s products,
especially because of the respondent’s prominent use of the complainant’s logo
on the site); see also Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶
4(b)(iv) because the respondent and the complainant were in the same line of
business and the respondent was using a domain name confusingly similar to the
complainant’s FITNESS WAREHOUSE mark to attract Internet users to its
<efitnesswarehouse.com> domain name).
Because Respondent and Complainant
are both engaged in selling computer software, Respondent is a competitor of
Complainant for the purposes of Policy ¶ 4(b)(iii). Respondent’s
domain name, which Respondent uses to sell its software, incorporates
Complainant’s mark in its entirety.
Furthermore, Respondent’s website features several references to Complainant’s
products and mark. Respondent’s use of
Complainant’s mark to sell its own products amounts to disruption of
Complainant’s business under Policy ¶ 4(b)(iii). See Schering
Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (“The
Panel declines to adopt a narrow interpretation of the term ‘competing,’ as
urged by Respondent . . . The Panel agrees with Complainant that at least some
confusion and/or diversion of consumers is likely here, even though
Complainant's and Respondent's tablets address different medical issues.”); see
also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see also EBAY, Inc.
v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teammsn.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 27, 2006
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