WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ninemsn Pty Ltd. v. Garth

Case No. D2001-0876

 

1. The Parties

The Complainant in this administrative proceeding is Ninemsn Pty Limited, located at 120B Underwood Street, Paddington NSW 2021, Australia.

The Respondent in this Administrative Proceeding is Garth, located at Højager 275, Hillerød, DK 3400, Denmark.

 

2. The Domain Names and Registrar

The disputed domain name is <ninemsm.com>. The Registrar of this domain name is Tucows.com, Inc, of Toronto, Ontario, Canada.

By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.

 

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of three members was appointed on August 24, 2001, by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 11, 2001, by email. The Center dispatched to the Registrar a Request for Registrar Verification on July 13, 2001. On July 19, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On July 19, 2001, the Center received an email from the Respondent and the Center sent a reply on the same day. On August 6, 2001, the Center received a returned notification of complaint and on August 10, 2001, the Centre issued a Notification of Respondent Default.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

 

4. Factual Background

The following information is derived from the Complainantís material.

The Claimant operates an Internet portal at <ninemsn.com.au> and <ninemsn.com>. The portal was launched in March 1998, and since then it has become Australia's leading Internet portal. It is a joint venture between Microsoft Corporation and Publishing and Broadcasting Ltd., one of Australia's largest media groups. The Complainant operates the portal under the trademark NINEMSN. The NINEMSN mark is an invented word. It is an agglomeration of the trade mark NINE, owned by Publishing and Broadcasting Ltd.'s related entity, Nine Network Australia Pty Ltd. (which operates a television station under the mark CHANNEL NINE), and the trade mark MSN, owned by Microsoft Corporation and derived from the name "Microsoft Network". The mark is used by the Complainant and other traders to provide a wide range of goods and services, including the following:

Advertising

Books and magazines

Clothing

Compact discs

Competitions

Computer consultancy and programming services

Computer hardware and software

Electrical products

Electronic banking

Financial services

Flowers

Food

Furniture

Gift guides

Gifts

Health and beauty products

News and current affairs

Office supplies

Online education and entertainment services

Product reviews

Real estate services

Sporting equipment

Sports information

Toys

Travel agency services

The Complainant has numerous Australian and New Zealand trade mark registrations for its NINEMSN mark. Details of these registrations are set out below.

Australia

NINEMSN Mark

Registration Number

Registration Date

Classes

NINEMSN & Device

799124

1 July 1999

42

NINEMSN & Device

799123

1 July 1999

41

NINEMSN & Device

799122

7 January 1999

39

NINEMSN & Device

799121

1 July 1999

38

NINEMSN & Device

799120

1 July 1999

36

NINEMSN & Device

799119

1 July 1999

35

NINEMSN

760209

21 April 1998

35, 36, 38, 39, 41, 42

It's Your World@ninemsn.com.au

812268

1 November 1999

35, 36, 38, 39, 41, 42

ninemsn Leading Australia Online

798875

30 June 1999

35, 36, 38, 39, 41, 42

New Zealand

NINEMSN Mark

Registration Number

Registration Date

Classes

NINEMSN

311574-311579

24 June 1999

35, 36, 38, 39 41, 42

NINEMSN & Device

602441-602446

4 November 1999

35, 36, 38, 39 41, 42

NINEMSN & Device

613041-613046

18 April 2000

35, 36, 38, 39 41, 42

ninemsn Leading Australian Online

602447-602452

4 November 1999

35, 36, 38, 39 41, 42

The Complainant has a very substantial reputation in its NINEMSN mark.

It extensively uses the NINEMSN mark to advertise goods and services. The following table sets out its expenditure over the past three financial years on advertising under the NINEMSN mark. The Complainant also has arrangements with Microsoft Corporation, Publishing and Broadcasting Ltd. and its related entities for the provision by those companies of substantial amounts of advertising to the Complainant. Over the past three fiscal years the following amount have been expended:

1998-1999

A$1,670,256

1999-2000

A$3,814,301

2000-2001 (first half)

A$1,307,830

The Complainant earned revenues of more than A$20 million in 2000, from its sales of goods and services under the NINEMSN mark.

Its Internet portal at <ninemsn.com.au> and <ninemsn.com> was visited by more than 72% of Australian Internet users in December 2000, according to independent research conducted by Red Sheriff, an international provider of Internet research and measurement services. This places the Complainant far ahead of its nearest competitors in Australia, Yahoo and the online Yellow Pages and White Pages. The mark NINEMSN is used extensively at the Complainantís portal.

Red Sheriff's research also indicates that 834 million page impressions were made of ninemsn's Internet portal by Internet users in 2000. This tally includes more than 250,000 page impressions made by users in Denmark and more than 25,200,000 made by users in the United States.

The Complainantís Internet portal has been discussed extensively in the press, and these discussions almost always refer to the NINEMSN mark.

The Complainant has registered or arranged for the registration of numerous domain names incorporating the NINEMSN mark and marks similar to it. Many of these domain names resolve to ninemsn's Internet portal. The following table sets out these domain names:

Ninemsn.co.nz

Ninemsn.com

Ninemsn.com.au

Ninemsn.net

Ninemsn.net.au

Ninemsn.net.nz

Ninemsn.org

Ninemsnnews.co.nz

Ninemsnnews.com.au

9msn.co.nz

9msn.com

9msn.com.au

9msn.net

9msn.net.au

9msn.net.nz

The majority of individual sites within the ninemsn network incorporate the NINEMSN mark in the URL, such as <website.ninemsn.com.au> or <ninemsn.com.au/website>.

The strong reputation of ninemsn's NINEMSN mark is reflected in relationships that the Complainant has forged with several leading Australian and United States businesses. It provides content distribution, advertising and sponsorship services to these businesses under its NINEMSN mark. Details of these relationships are set out below:

Business

Services provided by ninemsn

Vodafone

The world's largest mobile communications company.

NINEMSN-branded wireless application protocol (WAP) and short message service (SMS) content, including email, weather advice and financial information.

Cable & Wireless Optus

A major Australian telecommunications company and a subsidiary of Cable & Wireless plc, one of the world's leading telecommunications firms.

NINEMSN-branded WAP content, including news and sport and financial information.

Compaq

The world's largest supplier of computing systems.

Advertising and sponsorship services at ninemsn's portal.

L'Oreal

The world's best selling cosmetics firm.

Advertising and sponsorship services at ninemsn's portal.

Commonwealth Bank of Australia

One of Australia's largest financial services providers and largest ten companies.

Advertising and sponsorship services at ninemsn's portal.

MLC

A leading Australian financial services and insurance firm.

Advertising and sponsorship services at ninemsn's portal.

ebay.com.au

The Australian site of eBay, the world's largest provider of online, one-to-one auction-based trading services.

Advertising and sponsorship services at ninemsn's portal.

monster.com.au

The Australian site of Monster, a leading global provider of online employment and recruitment services.

Advertising and sponsorship services at ninemsn's portal.

dstore.com.au

A leading Australian provider of online retailing services.

Advertising and sponsorship services at ninemsn's portal.

The Respondent, has registered the subject domain name and diverts Internet users from that domain name and sub-domain to a pornographic site at <6tgp.com>, so that Internet users who enter <ninemsm.com> are automatically directed to this pornographic site.

In 1999, the Complainant became aware that <ninemsm.com> had been registered by "Samran" and that Samran had diverted that domain to a pornographic website. On November 1, 1999, the Complainantís lawyer contacted the Internet service provider hosting the domain, SuperBusiness Net, Inc., and requested that the connection to the pornographic website be severed. SuperBusiness Net, Inc., agreed and the subject domain no longer was diverted to the pornographic website.

In September 2000, the Complainant became aware that the domain name was registered in the name of "Claus Rasmussen". He was using a different Internet service provider, Intercosmos Media Group, Inc., to divert the <ninemsm.com> domain to a pornographic website at <6tgp.com>. On October 20, 2000, and November 15, 2000, the Complainantís lawyer contacted Intercosmos Media Group, Inc., to request that the connection to the pornographic website be severed. Intercosmos Media Group, Inc., did not agree to this request.

On October 30, 2000, the Complainantís lawyers sent a letter of demand to Mr. Rasmussen required him to remove all pornographic material and to transfer the subject domain name to the Complainant. The letter sent by courier could not be delivered, because the address details listed by Mr. Rasmussen in the Whois registry entry for the subject domain name were invalid. The letter sent by email appears to have been received because it did not "bounce back" from Mr. Rasmussen's email address listed in the Whois registry. No response was received to the letter of demand and Mr. Rasmussen continued to divert the subject domain name to his pornographic website at <6tgp.com>.

In early 2001, the Complainant became aware that the subject domain name was registered in the name of "Garth", the Respondent in these proceedings. The subject domain name continues to be diverted to the pornographic website at <6tgp.com> and that website continues to be registered in Claus Rasmussen's name. He also has registered the domain name <ninensn.com>.

On July 19, 2001, Mr. Soren Jaral, the billing and administrative contact for the Respondent wrote to the case manager in this proceeding stating:

"What is this all about. Iím a bit tired of being bombed with emails and letters from an, for me, unknow[n] origin (I refuse to receive parcels from outside DK if I donít know what it is).
I donít own a domain name called ninemsn.comÖ.So please stop this spamming in emails and parcels thanksÖ."

The case manager relied noting that the domain name in issue in this matter is <ninemsm.com> to which Mr. Jaral responded:

"I donít own the domain name ninemsm.com either.

The only domain name [I] own is <jaral.dk> (my family name)."

He continued noting that the ninemsm, ninemsn domain names were "Önot registered by me."

The Complainant was asked to comment on the e-mail and did so stating that the subject domain name is registered to the Respondent, not to Mr. Jaral and that he is merely the contact person. The Complainant also noted that the website to which Mr. Jaralís domain name resolves includes as a link the pornographic website at <6tgp.com>, which is the same site to which the subject domain name is linked. A copy of this communication was sent to the Respondent, but it made no comment.

The Respondent made no submission in this proceeding.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on its registered trade marks and extensive use of its name "ninemsn" and asserts that the subject domain is confusingly similar. It notes that the only difference is the addition of ".com" and the substitution of "m" for "n".

The Complainant points to the lack of any legitimate commercial use by the Respondent of the subject domain name as evidence to support its contention that the Respondent has no legitimate interest in the subject domain. It notes that the Respondent is not known by "ninemsn" and its link of the subject domain name to a pornographic site both show that the Respondent does not have a legitimate interest in the subject domain name.

As to bad faith, the Complainant refers to the contact particulars supplied by the Respondent and asserts that the Respondentís is fictitious and its mailing addresses erroneous The history of registrations supports an intentional bad faith use of the subject domain name for the purpose of attracting people through confusion with the Complainantís name.

B. Respondent

The Respondent has not participated in this proceeding.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

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

(ii) the Respondent has no legitimate interest in respect of the domain name; and

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

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant refers to a number of domain name dispute decisions. While these are neither controlling nor binding on this administrative panel, they can be of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the mark "ninemsn" both through extensive registrations and use. The addition of ".com" is not a distinguishing feature. The substitution of the letter "n" by the letter "m" leaves the mark and the subject domain name almost indistinguishable. The Administrative Panel has no doubt that the two are confusingly similar. The first email from Mr. Jaral to the case administrator supports this conclusion. The position of the two letters on the keyboard and their similarity in sight do so also.

The Administrative Panel is satisfied that the requirements of paragraph 4(a)(i) have been met.

B. Respondents Legitimate Interest

The absence of any legitimate commercial use of the subject domain name supports a conclusion that the Respondent does not have a legitimate interest in it. Linking the subject domain name to a pornographic with no other apparent purpose does so also. The fact that the Complainantís mark and name is a derivation, that is, not an actual word, and the Respondentís extremely close replication of the name raise serious questions of legitimacy.

Although a Respondent is not obliged to deliver an answer to a domain name complaint because the Complainant has the obligation of establishing its case, a failure to do so leaves a Respondent vulnerable to inferences that flow from unrebutted information provided to an administrative panel by a complainant.

In this case, the Respondent has provided no response to the information supplied to the Administrative Panel by the Complainant and the Administrative Panel is satisfied that the requirements of paragraph 4(a)(ii) have been met.

C. Bad Faith

The facts that a respondent has no legitimate interest in a domain name that it has registered and which is confusingly similar to a mark of a complainant do not establish bad faith registration and use, but the information that leads to these facts may support that conclusion.

In this case the development of the subject domain name with the subtle difference of an "m" for an "n" suggests a malevolent design at the outset. The exclusive use of the subject domain name to link to a pornographic site continues the suggestion.

Although a registrant is entitled to use whatever name it wants in its registration, the use of a word with no apparent link to a person or entity may give rise to suspicion. In this case, this appears to be coupled with incorrect mailing data, although the first email of Mr. Jaral suggest that the material was in fact delivered to the appropriate address, but that he refused to accept it.

The communications from Mr. Jaral and the contact particulars supplied to the registrar suggest an intention to avoid the domain name dispute resolution process. The fact that his domain name is linked to the same pornographic site as the subject domain name, without explanation raises suspicion. The continued involvement of Mr. Claus Rasmussen also adds to the weight of circumstances that lead to a conclusion of bad faith.

The Administrative Panel is satisfied that the requirements of paragraph 4(a)(iii) have been met.

 

7. Decision

Based on its consideration of all of the information made available to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case. It asks that the subject domain name be transferred to it. The administrative panel so orders.

 


 

Edward C. Chiasson
Presiding Panelist

Amund Grimstad
Panelist

Desmond James Ryan
Panelist

Dated: September 5, 2001