WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v Momm Amed Ia
Case No. D2001-1454
1. The Parties
The Complainant in this administrative proceeding is Microsoft Corporation, a Washington corporation with its principal place of business in Redmond, Washington, United States of America.
The Complainant is represented by Suzanne V. Wilson Esq and Cheryl Williams Esq of Arnold & Porter 777 South Figueroa Street, 44th Floor, Los Angeles, California 90017-5844, United States of America.
The Respondent is Momm Amed Ia of Kwangsan-gu MYONGDO-dong 13-1, Kwangju, South Korea.
2. The Domain Name and Registrar
The domain name in issue is <msnmember.com> ("the Domain Name").
The Registrar of the domain name is Bulk Register.com.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on December 13, 2001, an e-mail version and on December 18, 2001, hard copies of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On January 22, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On December 21, 2001, the Center transmitted via e-mail a request for registrar verification in connection with this case. On January 21, 2002, Bulk Register transmitted via e-mail to the Center its Verification Response, confirming that the registrant is Momm Amed Ia, the Respondent herein and stating that the Administrative and Technical Contact is Michael Solncev of Simitrovs St. 22-12, Moscow, RU 102114, Russia.
No Response has been filed by the Respondent. The Center attempted to send notification of the Complaint to the Respondent and to the Administrative and Technical Contact by courier and by e-mail. The courier was unable to effect delivery at the addresses given above, and the e-mail addresses were described as having "permanent fatal errors". It is, of course, the Respondent’s responsibility to provide accurate addresses – so far as the Center is concerned, it complied with paragraph 2(a) of the Rules. Notification of Respondent Default was sent on February 12, 2002, with the same results.
On February 27, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by March 13, 2002.
4. Factual Background
(a) The Complainant is the registered proprietor of numerous United States Trademarks protecting the mark "MSN" ("the Trade Mark"), registered over a period of years, beginning in 1995.
(b) The Domain Name was registered on June 12, 2000.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:-
(i) Microsoft is a well-known, worldwide provider of computer software and related products and services, including products for use on the Internet and for developing Internet software, and online services and information delivered via the Internet. Since its inception in 1975, Microsoft has created software and Internet services for use in the workplace, home, and education;
(ii) Microsoft’s Internet services include an online portal at <www.msn.com> which offers consumers, among other things, many online services, including shopping, travel, business, health and entertainment information and Internet search services, at Internet addresses such as <search.msn.com>, <shopping.msn.com>, <my.msn.com>, and <communities.msn.com>;
(iii) Microsoft has spent substantial time, effort and money advertising and promoting the Trade Mark throughout the world. As a result, the Trade Mark has become world famous and Microsoft has developed an enormous amount of goodwill in the mark;
(iv) In connection with the Trade Mark, Microsoft has established Internet websites located at the domain names <msn.com> and <microsoft.net> (collectively, the "MSN Websites"). The MSN Websites allow computer users throughout the world to access information regarding MSN and its products and to use and enjoy the Internet services provided by Microsoft;
(v) Consumers would expect to find a website at <msnmember.com> that is somehow associated with or sponsored by Microsoft. As a result of the Respondent's actions, consumers who are seeking an official Microsoft website located at a domain name comprised of the Trade Mark, <msnmember.com> will be directed to the Respondent’s website, entitled <gito.com>, which offers online services that are not provided by Microsoft. As a result of the Respondent’s actions, consumer expectations are frustrated as they either are unable to use Microsoft’s Internet services at <msnmember.com> or mistakenly use competing Internet services believing them to be a Microsoft service;
(vi) The Respondent has used the domain name <msnmember.com> to divert consumers to a website entitled <gito.com>, previously entitled <bestofonline.com>, that offers Internet services and other products that are not provided by, or in anyway affiliated with, Microsoft. The Respondent has capitalized on the fame of the Trade Mark in order to offer services that are in competition with Microsoft’s services and products.
As noted above, no Response has been filed.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
As to element (i), the Panelist has no hesitation in finding that the Domain Name is confusingly similar to the trade mark MSN. Given the fame of the Complainant, and the fact that Internet users have become very well acquainted with the Complainant’s <msn.com> website, it is inevitable that anyone seeing the Domain Name would immediately assume it was associated with the Complainant and the Trade Mark.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that he has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant suggest that the Respondent's interest in the Domain Name was not in connection with a bona fide offering of goods or services, but rather to take advantage of the reputation of the Complainant's Mark to attract potential customers to his own Internet site. In the absence of any justification from the Respondent of his activities in relation to the Domain Name, the Panelist concludes that the Complainant has established element (ii).
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies.
Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as follows:-
"by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [Respondent's] web site or location, or of a product or service on [Respondent's] web site or location."
Given the undoubted worldwide fame of the Trade Mark, the inference that the Domain Name was registered in bad faith is irresistible. In the light of the circumstances alleged in paragraph 5(A)(vi) above it is clear that the Respondent's activities come within the terms of (iv) of paragraph 4(b) of the Policy. If further evidence of the Respondent’s bad faith were required, that is provided by his failure to provide Bulk Register with contact details which are sufficient to locate him.
The Panelist therefore concludes that the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 7 above, the Panelist concludes that:-
- the domain name <msnmember.com> is confusingly similar to the trade mark MSN of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the Domain Name <msnmember.com> be transferred to the Complainant, Microsoft Corporation.
Dated: March 13, 2002