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Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei [2005] GENDND 1793 (12 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei

Case No. D2005-0642

1. The Parties

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

The Respondent is Whois Privacy Protection Service / Lee Xongwei, Bellevue, Washington, United States of America and Fuzhou, Fujian, China, respectively.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2005. On June 21, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 21, 2005, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under registrar lock throughout the proceeding. The Center took a WHOIS printout which showed that the disputed Domain Name was registered with eNom and that Respondent Lee Xongwei was the current registrant of the disputed domain name. The Center verified that 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 August 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2005.

The Center appointed Adam Taylor as the sole panelist in this matter on September 29, 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 needs no introduction. It provides numerous forms of information services under its MSN trademark via its “MSN Network”.

The United States Patent and Trademark Office (USPTO) has granted federal trademark registrations 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

The first three of these registrations have first use dates of 1995, as evidenced by USPTO printouts attached to the Complaint.

The Complainant operates websites at domain names comprising the MSN mark, including <msn.com> and <msn.net>. The Complainant provides news, financial and investment information at the website “www.money.msn.com” under the name “MSN Money”.

The disputed domain name was registered on November 6, 1998.

As of June 17, 2005, the disputed domain name resolved to a directory website headed “msnmoney.com” with links containing financial terms including “Money”, “Personal Finance”, “Bill Pay” and “Moneycentral.”

5. Parties’ Contentions

A. Complainant

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, which goodwill has been recognized by UDRP panels.

The disputed domain name is identical to the Complainant’s common law trademark MSN MONEY, and confusingly similar to its registered MSN mark. The addition of a descriptive term such as “money” and the generic term “.com” to the protected MSN mark is insufficient to avoid confusion with the registered trademark. The disputed domain name entirely incorporates the Complainant’s marks with the mere addition of the “money” element and is confusingly similar in appearance, sound, and commercial impression to the MSN mark. The addition of the generic top-level domain “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.

Rights or Legitimate Interests

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use its mark in a domain name or in any other manner. The Respondent’s use is little more than the use of a famous trademark to divert traffic to competitors and to itself.

The website at the disputed domain name is a search engine page displaying results apparently keyed to the term “MSN Money”. Some links are labeled Money, Bill Pay and Moneycentral. MSN MONEY and MSN BILL PAY are common law trademarks of Complainant and MONEYCENTRAL is a registered trademark of Complainant. The Respondent’s links lead to offerings of goods or services by third parties. Such usage exceeds any theory of fair use of the MSN MONEY trademark.

Registered and Used in Bad Faith

The Respondent’s bad faith is manifested in several ways: (1) adoption of a famous trademark; (2) diversion of traffic to competitors; and (3) utilization of the home page after receiving a demand letter.

The Respondent has registered the disputed domain name in bad faith by doing so with knowledge of Complainant’s rights in the MSN mark and the obvious similarity between MSN and the disputed domain name. It is inconceivable that Respondent was unaware of the Complainant’s rights in the famous MSN MONEY mark

The fame and reputation of a complainant’s mark is persuasive in determining a respondent’s bad faith intent. It is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s trademarks at the time of registration.

Using a domain name comprising a well-known trademark to attract users to the registrant’s website constitutes a bad faith use of the domain name.

Even if 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. Respondent must have expected that any use of the disputed domain name would cause harm to the Complainant. The disputed domain name wholly incorporates the Complainant’s mark and is so obviously indicative of the Complainant’s products and services that the Respondent’s use of this domain name would inevitably lead to confusion of some kind.

A proxy service has been utilised. While at least one UDRP panel has noted that in and of itself, the use of a proxy service is not a per se indicator of bad faith CyBerCorp Holdings, Inc. v. Jay Allman, National Arbitration Forum FA 244090, in this case, viewing the totality of the situation, namely the adoption of a famous trademark for a web page of links and the lack of acknowledgement of correspondence, does suggest bad faith on the part of the entity that directed registrant to register the name.

B. Respondent

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

6. Discussion and Findings

Procedural Issue

When the Complaint was filed, the disputed domain name was registered in the name of “Whois Privacy Protection Service, Inc”, which is obviously a proxy service to enable “real” owners of domain names to conceal their identities. By the time of the formal commencement of the proceedings under paragraph 4(c) of the Rules, the registrant had been changed to “Lee Xongwei”. Both the proxy service and Lee Xongwei have been served with copies of the Complaint and neither has responded. The Panel sees no reason to distinguish between the two.

Substantive Issues

A. Identical or Confusingly Similar

As stated above, the Complainant has a number of registered trademarks for the term MSN as well as common law rights deriving from its use in commerce since 1995. The Complainant has also demonstrated common law rights in the term MSN MONEY.

The disputed domain name is identical to the trademark MSN MONEY. It is well-established that domain suffixes are disregarded for the purpose of this comparison.

The disputed domain name includes the Complainant’s trademark MSN in its entirety, together with the generic word “money”. This additional generic term fails to dispel the connection between the domain name and the trademark; indeed it reinforces the link. The disputed domain name is therefore confusingly similar to the Complainant’s MSN trademark.

The Panel concludes that the disputed domain name is identical and confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests (see, eg, Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

As to paragraph 4(c)(i), the Respondent has used the disputed domain name in connection with an offering of services. However, the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks. The Respondent has not submitted a response to deny the Complainant’s assertions concerning the inappropriate nature of the Respondent’s use of its trademarks nor have they provided any explanation for use of the term MSN in connection with a website offering financial-related links. Indeed, the Panel has concluded below that the Respondent used the disputed domain name to profit by creating a likelihood of confusion with the Complainant’s trademark. In these circumstances the Respondent’s offering could not be said to be bona fide.

There is no evidence that paragraphs 4(c)(ii) or (iii) apply.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent has not come forward to suggest any genuine purpose for registration or acquisition of the disputed domain name which, on the face of it, targets the Complainant.

The Panel is of the view that the Respondent intentionally attracted for commercial gain Internet users to its website by trading on the goodwill associated with the MSN and MSN MONEY trademarks and creating a likelihood of confusion with the trademarks as to the source, sponsorship affiliation or endorsement of Respondent’s website and of the services offered on the site (paragraph 4(b)(iv) of the Policy). The Respondent sought to create confusion by suggesting a connection with the trademark through the disputed domain name itself and also by means of its website. The site is prominently branded with the disputed domain name and it contains financial content as does the Complainant’s MSN MONEY service. Indeed one of the links on the Respondent’s website is to “Moneycentral”, a registered trade mark of the Complainant. It is reasonable to infer that the purpose of the Respondent’s website was to generate commercial gain.

While a proxy service can have a legitimate purpose such as avoiding spam, the Panel considers that its use in this case is suggestive of bad faith when taken with the other factors mentioned above.

The Panel concludes that the disputed domain name was registered and has been 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 name <msnmoney.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist

Date: October 12, 2005