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Microsoft Corporation v. Hassan Pennock [2005] GENDND 1926 (21 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Hassan Pennock

Case No. D2005-1020

1. The Parties

1.1 The Complainant is Microsoft Corporation, of Redmond, Washington, United States of America, represented by Arnold & Porter, United States of America.

1.2 The Respondent is Hassan Pennock, of Minneapolis, Minnesota, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <msnhelper.net> is registered with Direct Information Pvt Ltd. dba Directi.com.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2005. On September 28, 2005, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On September 29, 2005, Direct Information Pvt Ltd. dba Directi.com transmitted by email to the Center its verification response. 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”).

3.2 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 October 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2005.

3.3 No response was filed, and Respondent was notified of its default on October 25, 2005.

3.4 The Center appointed Mr. Jay Simon as the Sole Panelist in this matter on November 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

4.1 Complainant and its trademarks are ubiquitous in the cyberspace arena. Complainant’s operating systems are installed in the vast majority of personal computers sold throughout the world. Complainant’s products include a wide array of computer software and related products and services for use on the Internet and for developing Internet software and online services delivered via the Internet for workplace, home, educational uses.

4.2 A sampling of Complainant’s registered trademarks includes:

MSN No. 2,792,781 Reg. December 9, 2003 IC 038

MSN No. 2,625,296 Reg. September 24, 2002 IC 036

MSN No. 2,352,114 Reg. May 23, 2000 IC 041

MSN No. 2,153,763 Reg. February 3, 1998 IC 009

MSN No. 2,342,096 Reg. April 18, 2000 IC 035

These marks are registered in the United States Patent and Trademark Office and all appear on the Principal Register.

4.3 Complainant also holds several domain names which include <msn.com> and <msn.net>.

4.4 Complainant offers free access to its MSN Toolbar which includes a “pop-up blocker” feature designed to prevent unwanted content from entering a user’s computer. Complaint also offers security programs to combat “spyware and adware”.

4.5 Respondent registered the disputed domain name in February 2005.

4.6 Respondent had registered a domain name <msnprotection.com> which Respondent deleted on or before June 13, 2005. Complainant had sent a cease and desist letter, electronically and by hard copy, regarding this domain name on June 1, 2005, which letter was undeliverable because the geographic address provided by Respondent in the Whois database did not exist. Complainant then found that Respondent had registered the disputed domain name, and Complainant, on June 26, 2005, sent another cease and desist letter. This letter was apparently delivered, but Respondent did not respond to the letter.

4.7 Respondent did not file a response in these proceedings and was notified of its default by the Center.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that disputed domain name is confusingly similar to Complainant’s marks and that the MSN mark is a famous mark.

5.2 Complainant further contends that incorporation of its mark in the disputed domain establishes the confusing similarity, and that the addition of a common descriptive term is not sufficient to distinguish the disputed domain name from Complainant’s MSN marks.

5.3 Complainant further contends that the confusing similarity is exacerbated by the “look and feel” of Respondent’s web page which also displays Complainant’s stylized MSN logo, its flag logo trademark, and its Butterfly logo.

5.4 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, Complainant having no connection or affiliation with Respondent and Respondent not being licensed, expressly or impliedly, to use any of Complainant’s marks.

5.5 Complainant further contends that Respondent’s use of the disputed domain name is for profit – by advertising adware and spyware produced by entities other than Complainant, and that Respondent’s offering of goods and services is not a bona fide use of the disputed domain name, e.g., by selling products in competition with Complainant.

5.6 Complainant contends that Respondent registered and is using the disputed domain name in bad faith and that Complainant’s worldwide fame in the MSN mark must have been known to Respondent at the time of registration of the disputed domain name – as well as the constructive notice provided by registration of Complainant’s MSN trademarks.

5.7 Complainant further contends that the non-existence of Respondent’s address at the time of registration of the disputed domain name shows bad faith registration of that name.

5.8 Complainant further contends that Respondent’s use of the disputed domain name to attract Internet users to Respondent’s website for pecuniary gain is in bad faith.

5.9 Complainant contends that Respondent’s withdrawal of the <msnprotection.com> domain name in response to Complainant’s electronic cease and desist letter shows bad faith regarding the registration and use of the disputed domain name.

5.10 Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

5.11 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

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

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in paragraph 6.1.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraphs 14(b) of the Rules, “the panel shall draw such inferences… as it considers appropriate”.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 Complainant’s MSN marks are well-known throughout the world, and particularly so with respect to Internet users. The disputed domain name incorporates the entirety of Complainant’s well-known, registered mark and differs from the mark by the addition of the word “helper”. The use of this added common, descriptive word does not change the overall nature or impression of the mark, particularly one as well-known as Complainant’s MSN mark. Thus, the addition of the word “helper” does not serve to distinguish the disputed domain name from Complainant’s mark. Further, the “.net” designation is simply an address for a gTLD and does not distinguish the disputed domain. See EAuto, L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, regarding incorporation of the entirety of a registered mark. See also Microsoft Corporation v. Whois Privacy Protection Service/Lee Xougwei, WIPO Case No. D2005-0642. This Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, i.e., the MSN series of marks.

6.5 The content of Respondent’s web page, i.e., its “look and feel” is of no relevance to the inquiry regarding confusing similarity. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions available at “http://arbiter.wipo.int/domains/search/overview/” and the discussion of the applicability of the Overview to UDRP cases in Fresh Intellectual Properties, Inc. v. 800Network.com, Inc. WIPO Case No. D2005-0061, particularly footnote 3. Look and feel may, however, be considered under the issue of bad faith registration and use.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.6 Paragraph 4(c) of the Policy lists three non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name.

6.7 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with Complainant. However, where the Complainant having made the necessary assertions and providing supporting evidence, it is incumbent upon the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, the Respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence regarding its rights or legitimate interests in the disputed domain name, and such failure is tantamount to admitting the truth of Complainant’s assertions; see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.8 Of the factors listed in paragraph 4(c) of the Policy, Respondent having failed to respond to the Complaint, there is no evidence that Respondent was commonly known by the disputed domain name. And Complainant has presented evidence of the likelihood of commercial use by Respondent of the disputed domain name for misleadingly diverting Internet users to Respondent’s website.

6.9 Complainant’s evidence shows clearly that Respondent is using a domain name confusingly similar to Complainant’s well known mark to attract Internet users to a site offering goods and services in competition with the goods and services offered by Complainant. Further, it is inconceivable that Respondent was not aware of Complainant’s MSN marks. Respondent’s use of the disputed domain name is not a bona fide use of the name. See PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701 holding that intentionally trading on the fame of another cannot constitute a bona fide offering of goods or services.

6.10 Also, Complainant has asserted, and there is no evidence to the contrary, that Respondent has no affiliation with Complainant and Complainant has not licensed Respondent to use any of the MSN marks. In the view of this Panel, Respondent has no rights or legitimate interests in the disputed domain name.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.11 Paragraph 4(b) of the Policy sets out four, non-exclusive indicia of bad faith registration and use of a disputed domain name. Given the uncontested allegations and evidence provided by Complainant, this Panel reaches the conclusion that Respondent registered and is using the disputed domain name in bad faith.

6.12 As the Panel has noted, it is inconceivable that Respondent was unaware of Complainant’s MSN marks, witness the withdrawal of the <msnprotection.com> domain name after Complainant sent an electronic cease and desist letter (as well as the fame and registration of Complainant’s marks).

6.13 Based on the evidence presented by Complainant, it is clear to this Panel that Respondent sought to trade off the fame and widespread familiarity of Complainant’s marks by offering products competing with products offered by Complainant and profiting thereby. The fact that Respondent’s website depicted other marks of Complainant is additional evidence of Respondent’s intentional desire to confuse Internet users regarding Respondent’s affiliation with Complainant or Complainant’s sponsorship or endorsement of Respondent’s website. See paragraph 4(b)(iv) of the Policy. See also Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

6.14 Respondent has also shown bad faith in listing a geographic address for contact that does not exist.

7. Decision

7.1 For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, this Panel orders that the domain name <msnhelper.net> be transferred to Complainant.

Jay Simon
Sole Panelist

Dated: November 21, 2005