national arbitration forum

 

DECISION

 

Microsoft Corporation v. extreme

Claim Number:  FA0510000587423

 

PARTIES

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 extreme (“Respondent”), Istanbul, 34, 34890, Turkey.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <downloadmsn.net>, registered with iHoldings.com, Inc. d/b/a DotRegistrar.com.

 

PANEL

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 Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2005.

 

On October 27, 2005, iHoldings.com, Inc. d/b/a DotRegistrar.com confirmed by e-mail to the National Arbitration Forum that the <downloadmsn.net> domain name is registered with iHoldings.com, Inc. d/b/a DotRegistrar.com and that Respondent is the current registrant of the name.  iHoldings.com, Inc. d/b/a DotRegistrar.com has verified that Respondent is bound by the iHoldings.com, Inc. d/b/a DotRegistrar.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 October 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 2005 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@downloadmsn.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 23, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <downloadmsn.net> domain name is confusingly similar to Complainant’s MSN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <downloadmsn.net> domain name.

 

3.      Respondent registered and used the <downloadmsn.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Microsoft Corporation, has manufactured, marketed, and sold computer software and related products and services.  Complainant’s products and services include computer operating systems, client/server applications, business and consumer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, computer input devices, online information and entertainment services, electronic commerce services, and computer publications.  Complainant is the owner of numerous proprietary marks for such computer software and related goods and services.  Complainant’s Internet services include a news and information network known as the Microsoft Network, or “MSN.”  Complainant began using the MSN mark in 1995.  Additionally, Complainant asserts that it first registered the MSN mark with the U.S. Patent and Trademark Office on April 25, 1997 (App. No. 75/280,954), but it does not provide a registration number or a copy of this trademark registration (or any other of its U.S. trademark registrations).  The Panel takes notice that this trademark registration is Reg. No. 2,153,763, registered on April 28, 1998.  Complainant also asserts that it holds trademark registrations in other jurisdictions, including Canada, the European Community, Saudi Arabia, and Turkey.

 

Respondent registered the <downloadmsn.net> domain name on December 13, 2004.  The website associated with the <downloadmsn.net> domain name offers free downloads of Complainant’s MSN Messenger software and also contains various advertisements and links to other websites that offer, inter alia, dating services, services for persons “trying to find a sex partner,” pornographic websites, products for sexual enhancement, and on-line casino gambling.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has asserted that it has registered the MSN mark in multiple jurisdictions.  It offers these assertions to demonstrate that it has rights in the MSN mark.  The Panel accepts this evidence as proof that Complainant has rights pursuant to Policy ¶ 4(a)(i).  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.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

The Panel finds that the <downloadmsn.net> domain name is confusingly similar to Complainant’s MSN mark.  The only difference is the addition of the word “download,” which does not significantly distinguish the domain name from the mark and is a term that is related to Complainant’s goods and services.  See 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); L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent is appropriating Complainant’s mark to offer free downloads of Complainant’s MSN messenger and offer advertisements and links to other websites that offer dating services, services for persons “trying to find a sex partner,” pornographic websites, products for sexual enhancement, and on-line casino gambling.  The Panel finds that appropriating another’s mark to offer links to these types of services does not demonstrate that Respondent has rights or legitimate interests; it is not a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

 

There is nothing in the record, including the WHOIS registration information, which demonstrates that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is appropriating Complainant’s mark to offer free downloads of Complainant’s MSN messenger service and offer advertisements and links to other websites that provide dating services, services for persons “trying to find a sex partner,” pornographic websites, products for sexual enhancement, and on-line casino gambling.  The Panel infers that Respondent is receiving referral fees from these links.  The Panel finds that Respondent is using a domain name that is confusingly similar to Complainant’s MSN mark for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant.  Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

In addition, Respondent is appropriating Complainant’s mark to refer Internet traffic to pornography.  The Panel finds that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); 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 finds that Complainant has established Policy ¶ 4(a)(iii).

 

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 <downloadmsn.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra Franklin, Panelist

Dated:  December 7, 2005

 

 

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