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Microsoft Corporation v. Stop2Shop a/k/a Gene Vozzola [2004] GENDND 1309 (29 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Stop2Shop a/k/a Gene Vozzola

Case No. D2004-0510

1. The Parties

The Complainant is Microsoft Corporation, Redmond, Washington, United States of America, represented by Schwimmer and Associates, United States of America.

The Respondent is Stop2Shop a/k/a Gene Vozzola, Hollywood, Florida, United States of America.

2. The Domain Names and Registrars

The disputed domain names are <msn-kids.com>, which is registered with Wild West Domains, Inc., and <msn-search.com>, which is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2004. On July 16, 2004, the Center transmitted by email to Wild West Domains, Inc. and Dotster, Inc. requests for registrar verification in connection with the domain names at issue. On July 16, 2004, Wild West Domains, Inc. and Dotster, Inc. transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

On September 3, 2004, the Complainant amended the Complaint to remove a third domain name from the original Complaint. On September 6, 2004, the Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2004.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on October 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Microsoft provides numerous forms of information services under its MSN mark, including information services via its MSN Network. Microsoft holds four US trademark registrations for the MSN mark. Microsoft has spent substantial time, effort and money advertising and promoting its MSN mark throughout the world. Other UDRP panels have referred to the MSN mark as a famous mark. See, e.g., Microsoft Corp. v. Cupcake City, WIPO Case No. D2000-0818. In connection with the MSN mark, Microsoft has established Internet websites at domain names comprised of the MSN mark, including <msn.com> and <msn.net>.

In addition to its registered marks, Microsoft allegedly makes common law usage of the mark MSN KIDS, in relation to a portion of its MSN Network that provides content to children ages 3-12.

Microsoft also makes exclusive use of the mark MSN SEARCH in relation to Microsoft’s provision of search engine service.

5. Parties’ Contentions

A. Complainant

Microsoft contends that the domain names are confusingly similar to the MSN marks (including MSN KIDS and MSN SEARCH), in which Microsoft holds exclusive rights. Microsoft further contends that the Respondent does not have a bona fide interest in the domain names, and has registered and used the infringing domain names in bad faith. Microsoft requests that the disputed domain names be transferred to Microsoft.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy paragraphs 4(a)(i-iii), for the Complainant to prevail and have the disputed domain names transferred to it, the Complainant must show that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

A. Identical or Confusingly Similar

As set forth above, Microsoft owns several US registrations for the MSN mark, and the Panel finds that Microsoft makes common law usage of MSN KIDS and MSN SEARCH. This Panel finds that Microsoft has rights in the marks MSN, MSN KIDS and MSN SEARCH.

The disputed domain name, <msn-kids.com>, consists of the Complainant’s registered MSN service mark to which the generic term “kids” has been added, and is identical to Complainant’s common law mark, MSN KIDS. Similarly, the disputed domain name, <msn-search.com>, consists of the Complainant’s registered MSN mark to which the generic term “search” has been added, and is identical to Complainant’s common law mark, MSN SEARCH. Adding a generic term to a well-known mark does not sufficiently distinguish the domain name from Complainant’s mark. This view has been expressed repeatedly by other Panels, including those involving the MSN mark. See, e.g., Microsoft Corporation v. S.L., Mediaweb, WIPO Case No. D2003-0538; Microsoft v. Azra Khan, WIPO Case No. D2003-0481. Indeed, a previous Panel transferred to Microsoft an almost identical disputed domain name, <msnsearch.com>. Microsoft Corporation v. MSNetworks, WIPO Case No. D2002-0647.

Accordingly, this Panel finds that the domain names <msn-kids.com> and <msn-search.com> are confusingly similar to the Complainant’s MSN mark, and meets the first criterion of Policy Paragraph 4(a).

B. Rights or Legitimate Interests

Respondent is not authorized or licensed to use Complainant’s marks, nor is Microsoft aware of any relationship between Microsoft and Respondent. Respondent does not refer to Complainant’s marks on its websites. Rather, Respondent appears to have used the disputed domain names to direct traffic to other websites, which offer for sale trading cards or domain names.

Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Under 15 USC §1072, registration of the MSN mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s marks prior to registering the disputed domain names. It is inconceivable that Respondent was not aware of the MSN mark when it registered the disputed domain names.

Additionally, Respondent appears to have used the disputed domain names to direct traffic to other websites, which Respondent has attempted to use for commercial gain. This is bad faith under paragraph 4(b)(iv) of the Rules.

It also is noted that Respondent has had at least one other UDRP proceeding decided against him. Bank of America Corporation v. Stop2Shop.com a/k/a Gene Vozzola, NAF Claim No. FA021100001287076. It appears that Respondent is engaged in a pattern of registering and using domain names in which he has no legitimate rights or interests, which if further evidence of bad faith.

This Panel therefore finds that the disputed domain names were registered and used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <msn-kids.com> and <msn-search.com> be transferred to the Complainant.

Sandra A. Sellers
Sole Panelist

Dated: October 29, 2004