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Microsoft Corporation v. DOMAeN.com [2005] GENDND 1442 (22 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. DOMAeN.com

Case No. D2005-0613

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 DOMAeN.com, Mumbai, India.

2. The Domain Name and Registrar

The disputed domain name <msnbillpay.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2005. On June 15, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 16, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 28, 2005. 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 July 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2005.

The Center appointed James A. Barker as the sole panelist in this matter on August 8, 2005. 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

The Complainant, Microsoft Corporation, provides numerous forms of information services under the MSN trademark, including information services via its MSN Network. The United States Patent and Trademark Office has granted federal trademark registrations to the Complainant for the MSN mark in numerous classes of goods and services, including the following:

Mark	International Class	Registration No.	Registration Date
MSN	25	2,498,608	October 16, 2001
MSN	16	2,751,320	August 12, 2003
MSN	16	2,459,987	June 12, 2001
MSN	9	2,608,310	August 13, 2002

As evidenced by proof of registration attached to the Complaint, these registrations have first use dates prior to the creation date of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The following contentions are taken from the Complaint.

Identical or Confusingly Similar

The Complainant has spent substantial time, effort and money advertising and promoting the MSN mark throughout the world. As a result, the MSN mark has become distinctive and well-known, and the Complainant has developed an enormous amount of goodwill in the mark, goodwill which has been recognized by UDRP panels. See Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818 (October 22, 2000) (“Microsoft…provides Internet services…under the famous MSN trademark.”). See also Microsoft Corporation v. My Speedy Net Phone, WIPO Case No. D2003-0359 (July 15, 2003)(“MSN has become one of the world’s most popular Internet destinations.”); Microsoft Corporation v. S.L., Mediaweb, WIPO Case No. D2003-0538 (September 17, 2003) (“[Microsoft’s] MSN Internet portals are among the world’s most popular Internet destinations with more than 300 million monthly unique users worldwide.”); Microsoft Corporation v. SysWebSoft S.R.L and Martin Caetano, WIPO Case No. D2003-0528 (August 25, 2003) (Microsoft owns the “world famous” MSN trademark.). Cf., America Online Inc. v. David Nasi, NAF Case No. FA0111000102525 (February 1, 2002) (use of two famous trademarks, namely, MSN and AOL, together is likely to confuse consumers).

In connection with the MSN mark, the Complainant has established Internet websites located at domain names comprised of the MSN mark, including <msn.com> and <msn.net> (collectively, the “MSN Websites”). The MSN websites allow Internet users throughout the world to access information regarding the Complainant and its products and services and to use and enjoy the Internet services provided by the Complainant.

The Complainant utilizes the MSN mark in India (where the Respondent has its address) and in fact has a dedicated website for India at “www.msn.co.in”.

The disputed domain name is identical to the Complainant’s common law trademark MSNBILLPAY, and confusingly similar to its registered MSN mark.

The disputed domain name is confusingly similar to the MSN mark as well as Complainant’s website addresses and advertisements incorporating the MSN marks. When it registered the disputed domain name, the Respondent purposefully selected a domain name that wholly incorporated the MSN mark. Moreover, the addition of a descriptive term such as “bill pay” and the generic term “.com” to the protected MSN mark is “insufficient to avoid confusion with the registered trademark.” See Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215 (May 3, 2002), at 6.10 (holding that the “neutral” addition of “girls” in the <revlongirls.com> domain name did not overcome the domain name’s confusing similarity with the Revlon mark). Because the disputed domain name entirely incorporates the Complainant’s marks with the mere addition of the “billpay” element, the domain name is confusingly similar in appearance, sound, and commercial impression to the MSN mark.

Rights or Legitimate Interests

The Respondent is not authorized or licensed to use the Complainant’s marks and the Complainant is unaware of any relationship, contractual or otherwise, between it and the Respondent. To the best of the Complainant’s knowledge, the Respondent does not own any trademark or other rights in the MSN or MSNBILLPAY marks and does not offer any goods or services bearing the MSN or MSNBILLPAY marks. There is no reference to the Complainant or to the MSN or MSNBILLPAY marks, or to goods or services offered thereunder, at the website for the disputed domain name.

In response to a demand letter from the Complainant, the Respondent did not set forth rights in the disputed domain name. It indicated that the disputed domain name was registered to its “client” and that it would “discuss this with him.” The Respondent did not acknowledge any further correspondence from the Complainant.

The Respondent’s website at the disputed domain name does, however, contain an offer for a Sony PlayStation 2, pursuant to an offer purportedly from <anyfreegift.com>. The Sony PlayStation 2 is a product for playing computer games, which happens to be competitive to the Complainant’s famous XBOX product, which is a television-based system for playing computer games.

Registered and Used in Bad Faith

The Respondent has registered the disputed domain name in bad faith by doing so with knowledge of the Complainant’s rights in the well-known MSN and MSNBILLPAY marks and the obvious similarity between MSN and the disputed domain name. It is simply inconceivable that the Respondent was unaware of the Complainant and its rights in its marks, which, as noted above, have achieved worldwide fame. See Bloomberg L.P. v. Boo Design Servs. A/k/a BNY Bulletin Bd., NAF Case No. FA97043 (May 17, 2001) (stating that “unless [he has been] living a monastic life, Respondent has been actually aware of Complainant’s registered trademark and service mark.”)

The fame and reputation of a complainant’s mark is persuasive in determining a respondent’s bad faith intent. Similarly, given the fame of the MSN mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith.

In addition, it appears that the listed contact for the registrant is deeply engaged in the business of infringing domain names. The Complaint attached a copy of an article titled “21^st Century Bulk Traffic Generation,” attributed to that contact for the registrant, and providing the same email address listed in Whois for the contact for the disputed domain name. Among the techniques discussed in the article is registering misspelled domain names, a practice commonly known as typosquatting and routinely remedied by UDRP panels.

Finally, even if the Respondent had not used the disputed domain name to divert Internet users to an active website, its actions would still constitute registration and use in bad faith. The Respondent must have expected that any use of the disputed domain name – which is confusingly similar to the Complainant’s own <msn.com> and <billpay.msn.com> domain names – would cause harm to the Complainant. The disputed domain name wholly incorporates the MSN mark and is so “obviously indicative” of the Complainant’s products and services that the Respondent’s use of the disputed domain name would “inevitably lead to confusion of some kind.” (AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276 (November 25, 2000) at 6.)

B. Respondent

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

6. Discussion and Findings

Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must prove that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed as follows.

A. Identical or Confusingly Similar

The Complainant provided evidence of its rights in the trademark MSN, and the Panel accordingly finds that it has those rights. The ownership of a registered trademark satisfies the threshold requirement of having trademark rights.  (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, and the cases relevantly cited in that overview.) Further, the Complainant’s marks are registered on the principal register of the US Patent and Trade Mark Office. Previous panel decisions have indicated that such registration establishes a presumption of validity in U.S. trademark law. (The Coryn Group, Inc., Apple Vacations West, Inc. v. John A. Meara aka Pat Cavanaugh, WIPO Case No. D2003-0690.) The Respondent has not submitted any evidence to rebut these presumptions of validity.

The Complainant has been successful in other proceedings under the Policy in which the Complainant’s rights have clearly been recognized. The Complainant also asserts common law rights in the trademark MSN BILL PAY. But, for the reasons that follow, it is unnecessary for the Panel to make a finding in that respect.

It is well-established that the gtld extension “.com” is to be disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a mark. Putting the “.com” extension aside, the disputed domain name incorporates the Complainant’s mark entirely and adds the conjoined words “billpay”. Incorporation of a trademark in its entirety is sufficient, in most cases, to establish that a domain name is identical or confusingly similar to a complainant’s mark. (See Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395, and the cases relevantly cited in that one.)

The addition of the words “billpay” do not diminish or avoid confusion with the Complainant’s MSN mark. It is true that the words “billpay”, taken alone, have a common meaning. But, if anything, the inclusion of those words adds to the confusion. Those words do not operate in isolation – they are obviously and deliberately used in a meaningful combination with the MSN mark. The MSN mark is clearly associated with the Complainant and, as established in numerous panel decisions, is well-known. The MSN BILL PAY site and associated service is one promoted and provided by the Complainant. Put in this context, there may be confusion as to the sponsorship or approval of the Respondent’s services, because Internet users may mistakenly be led to believe that the Complainant authorizes or has some control over the Respondent.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s MSN mark.

B. Rights or Legitimate Interests

The Respondent did not contest the statements by the Complainant: that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Complainant’s mark is both well-known and distinctive. Nothing in the apparent identity of the Respondent as indicated in the registrar's Whois details suggests on its face that there is any legitimate relationship between the Respondent and the disputed domain name.

Paragraph 4(c) of the Policy sets out matters by which a respondent may demonstrate that it has rights or legitimate interests in a domain name. Panels have consistently found that the burden is on the respondent to provide evidence of its rights or legitimate interests under paragraph 4(c). (See for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.) That burden arises once a complainant establishes a prima facie case against the respondent, which the Complainant has done in this case.

The Respondent has had every opportunity to assert rights or legitimate interests in the disputed domain name, either in reply to correspondence from the Complainant, or in these proceedings. The Respondent has not done so. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The evidence put forward by the Complainant goes to establishing bad faith under paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) provides (in part) that there is evidence of bad faith registration and use where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The Panel finds that all of the elements of paragraph 4(b)(iv) are established as follows.

It is highly likely that the Respondent was aware of the Complainant’s mark when it registered the disputed domain name. The MSN mark is well-known and has been the previous subject of numerous panel decisions favouring the Complainant. The fact that the Complainant has previously taken a number of successful actions under the Policy itself demonstrates that the Complainant’s marks are well-known, and therefore a target for cybersquatters. Further, the Respondent offers, via the disputed domain name, a product that is the principal competitor of one offered by the Complainant. It is unlikely that a person offering such a product would be unaware of the Complainant’s marks. Accordingly, the Panel finds that the Respondent was aware of the Complainant’s MSN mark, and intentionally attempted to attract Internet users by using the disputed domain name.

It is also apparent that the Respondent operates its website (to which the disputed domain name refers) for commercial gain. The website to which the disputed domain name reverts promotes commercial products, and describes an “independent rewards program”. Although the way in which the Respondent achieves “commercial gain” is somewhat unclear, by advertising a commercial product and a rewards program, the Respondent’s website has the dressings of a site that operates for commercial gain. The Respondent has not offered any response to refute that impression.

The disputed domain name is confusingly similar to the Complainant’s mark, for the reasons stated above, and so creates “a likelihood of confusion” for the purpose of paragraph 4(b)(iv).

For these reasons, the Panel finds that the disputed domain name was registered and used in bad faith, for the purposes of paragraph 4(b)(iv) of the Policy. This case is a relatively clear one of cybersquatting, which is the central purpose of the Policy to prevent.

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 name, <msnbillpay.com>, be transferred to the Complainant.

James A. Barker
Sole Panelist

Dated: August 22, 2005