Microsoft Corporation v. Julio Cesar Fuentes
Claim Number: FA0704000971126
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <msnvideochat.net>, registered with Arsys Internet, S.L. d/b/a Nicline.com.
The undersigned certifies that she has acted independently and impartially and to the best of 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 April 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 27, 2007. The Complaint was submitted in both Spanish and English.
On April 27, 2007, Arsys Internet, S.L. d/b/a Nicline.com confirmed by e-mail to the National Arbitration Forum that the <msnvideochat.net> domain name is registered with Arsys Internet, S.L. d/b/a Nicline.com and that Respondent is the current registrant of the name. Arsys Internet, S.L. d/b/a Nicline.com has verified that Respondent is bound by the Arsys Internet, S.L. d/b/a Nicline.com 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 April 30, 2007, a Spanish language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 2007 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@msnvideochat.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <msnvideochat.net> domain name is confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <msnvideochat.net> domain name.
3. Respondent registered and used the <msnvideochat.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MSN mark (i.e. Reg. No. 2,191,997 issued September 29, 1998 and Reg. No. 2,342,096 issued April 18, 2000). Complainant also holds several international trademark registrations for the MSN mark, which includes the Office of Harmonization for the Internal Market (“OHIM”) for the
European Union (i.e. Reg. No. 1,489,103 issued June 6, 2001 and Reg. No. 2,375,988 issued October 9, 2002). Complainant has used the MSN mark in connection with the manufacturing, marketing and sale of computer software and related goods and services since 1975 acquiring almost 300 million users per month. Specifically, Complainant has used the MSN mark in connection with Complainant’s Internet service network for news and information. Complainant has registered the <msn.com> and <msn.net> domain names which it uses to offer Internet users online services, including MSN Search services, MSN Chat, e-mail services, and MSN Web Messenger instant messaging services.
Respondent registered the <msnvideochat.net> domain name on March 21, 2007. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website displaying adult-oriented content under Complainant’s MSN mark.
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 under Policy ¶ 4(a)(i) through registration of the mark with the USPTO as well as with the OHIM. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <msnvideochat.net> domain name is confusingly similar to Complainant’s MSN mark because it uses the mark in its entirety and simply adds the descriptive words “video chat” to the mark. The words added describe Complainant’s business, which includes the sale of online services such as chat and instant messenger with video options. The Panel finds that the addition of the descriptive words “video chat” does not alter Respondent’s domain name sufficiently to negate the confusingly similar aspects to Complainant’s mark under Policy ¶ 4(a)(i). See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).
Respondent has added the generic top-level domain (“gTLD”)
“.net” to Complainant’s mark. The addition
of a gTLD does not sufficiently distinguish Respondent’s disputed domain name
from Complainant’s mark under Policy ¶ 4(a)(i).
See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does not
affect the domain name for the purpose of determining whether it is identical
or confusingly similar); see also Nev. State Bank v. Modern Ltd. – Cayman
Web Dev., FA 204063 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <msnvideochat.net> domain name. Complainant’s submission establishes a prima facie case which shifts the burden to Respondent to prove that Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”).
The Panel assumes Respondent has no rights or legitimate
interests here because Respondent failed to respond to the Complaint. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where the respondent fails to
respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel will consider all available evidence to determine
whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is using the <msnvideochat.net> domain name to redirect Internet users to Respondent’s website displaying adult-oriented content. Respondent’s use of the domain name to display adult-oriented content is not a use in connection with 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 Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); see also Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult-oriented websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)).
Respondent offers no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <msnvideochat.net> domain name. Respondent’s WHOIS information identifies Respondent as “Julio Cesar Fuentes Campos.” Therefore, the Panel finds that Respondent has failed to establish rights or legitimate interests in the <msnvideochat.net> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <msnvideochat.net> domain name, which is confusingly similar to Complainant’s MSN mark, to redirect Internet users to Respondent’s website displaying adult-oriented material. The Panel finds that Respondent’s use of the disputed domain name to display adult-oriented material constitutes bad faith under Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
The Panel also finds that because Respondent’s domain name
is confusingly similar to Complainant’s MSN mark, Internet users may become
confused as to Complainant’s affiliation with the website. Presumably, Respondent is profiting from this
confusion through click-through fees. Respondent’s
use of the <msnvideochat.net>
domain name to redirect Internet users to a website displaying adult-oriented
content constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Qwest Commc’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum
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 <msnvideochat.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 31, 2007
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