WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. MSNetworks

Case No. D2002-0647

 

1. The Parties

The Complainants are is Microsoft Corporation, One Microsoft Way, Redmond, Washington, United States of America.

The Respondent is given as "MSNetworks" in the WHOIS record for the domain name, and in the Response is given as Microscience Corporation, Weidestrasse 137a, Hamburg, Germany. The contact is given as Daniel Mullen in both cases.

 

2. The Domain Name and Registrar

The domain names in issue are <msnetworks.com> and <msnsearch.com> (hereafter the "domain names").

The domain names were registered with eNom, Inc., 16771 NE 80th Street, Suite No. 100, Redmond, WA 98052.

 

3. Procedural History

(1) The Complaint in this case was filed in email form on July 12, 2002, and in hardcopy on July 15, 2002. A Response was filed in email form on August 21, 2002.

(2) The WIPO Arbitration and Mediation Center (the "Center") has found that:

- The Complaint was filed in accordance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules");

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- A Response to the Complaint was appropriately filed;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its markMark

The Complainant is the well-known, worldwide provider of computer software and related products and services. The Complainantís Internet services include a news and information network known as the Microsoft Network, or "MSN." MSN is well-known to the general public and particularly to Internet users. MSN offers consumers, among other things, Internet search services and shopping, travel, business, health and entertainment information. It attracts a very large number of Internet users from around the world (in North America to the MSN site, and in other countries to related sites identified with the MSN name and mark).

The United States Patent and Trademark Office has granted federal trademark registrations for the word "MSN" in numerous classes of goods and services, including telecommunications and electronic mail services; computer programs for transmitting and receiving electronic mail and for accessing global communications networks; providing bulletin board services and chat services by means of a global communications network; providing computerized on-line retail services in the field of general merchandise such as books, clothing, cars, computers, software, gifts, groceries and food, toys, music, electronics, and games; providing retail shopping information, including retailer guides and gift finders, via a global communications network; and providing information via a global communications network in a wide variety of fields including news, entertainment, travel, investments, sports, computers, parenting and health (hereafter "the Complainantís mark").

The Complainant has spent substantial time, effort and money advertising and promoting its mark throughout the world. As a result, the mark has become distinctive and well-known, and the Complainant has developed a significant goodwill in the mark.

B. The Respondent

A Response was filed. No information of the nature of the Respondent is provided, except the name, address and contact information given in section 1 above. Some information was alluded to in relation to its submissions, and this is given in section 5 below.

C. The Use of the Domain Name

The first domain name resolves to a site that displays the title "Welcome to MSN Networks" at the top of the web page. The website displays an assortment of banner advertisements for various companies, products and services, including Nokia cellular telephones, Handspring handheld devices, BestBuy and Iomega. The website features a link entitled "Search MSN Networks" that takes Internet users to the website located at the "msnsearch.com" domain name. The website located at the domain name "msnsearch.com" appears to be a placeholder site provided by the registrar of the domain name. The site features advertisements for various registrar Internet services, including a search capability that allows Internet users to search for a domain name using the registrarís domain name search services.

 

5. Partiesí Contentions

A. The Complainantísí Aassertions

The Complainant initially asserts a procedural claim going to the identity of the Respondent in this case. It asserts that the name and contact information of the registrant for both domain names are identical. It asks this panel to find that the registrants of both domain names are the same and therefore not require the initiation of separate administrative proceedings for <"msnetworks.com> and <msnsearch.com>. See Adobe Systems Incorporated v. Domain Oz, World Intellectual Property Organization ("WIPO") Case No. D2000-0057 (March 22, 2000), (finding that where the addresses of the registrants were identical, but the names of the registrants were merely similar, the registrants were the same and the Complainant would not be required to initiate separate administrative proceedings).

On substantive matters, the Complainant asserts that the Respondentís domain name is identical or confusingly similar to the Complainantís mark. Specifically, the Complainant asserts:

(1) Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the companyís name or mark.

(2) The domain names are confusingly similar to the Complainantís mark as well as the website addresses for the MSN Websites. The only difference between the domain names and the Complainantís mark and website addresses is the addition of the words "networks" and "search" in the Respondentís domain names. These minor additions do not avoid a finding that the domain names are confusingly similar to the Complainantís mark. "Precedent clearly supports the principle that the adaptation of a recognized trademark in a Domain Name by variation in spelling or by the . . . addition or insertion of . . . words or acronyms does not escape a finding of confusing similarity." America Online, Inc., v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001), p. 5 (finding the domain name "aolcasino" to be confusingly similar to the AOL mark).

(3) The Complainant uses its mark with other generic words in domain names for websites offering specific services such as "search.msn.com," "eshop.msn.com," "groups.msn.com," and "my.msn.com." A prior ICANN panel has found that this factor increases the likelihood of confusion. See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (April 11, 2001), p. 5 ("The fact that eBay routinely employs its EBAY mark with other words in domain names increases the likelihood of confusion."). The domain names therefore are confusingly similar to the Complainantís Mark.

(4) Because the domain names are confusingly similar to the Complainantís mark, it is highly likely that consumers who visit the websites associated with the domain names <msnetworks.com> and <msnsearch.com> will mistakenly believe that these websites, including their advertising content, are somehow endorsed or sponsored by, or associated with, Microsoft. It is very likely that Internet users seeking to locate an official MSN website may inadvertently find themselves at the Respondentsí websites. "MSN" is an acronym for the Microsoft Network. Thus, an Internet user may attempt to find MSN at "msnetworks.com." Likewise, an Internet user attempting to locate MSNís Internet search service may type in "msnsearch.com" instead of "search.msn.com." Having arrived at the Respondentís websites, Internet users would be confused and frustrated at not reaching an official Microsoft website.

The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:

(1) The Respondent has no connection or affiliation with Microsoft and has not received any license or consent, express or implied, to use the Complainantís Mark in a domain name or in any other manner.

(2) The Complainant is informed and believes that the Respondent Ė notwithstanding the fact that it identifies itself on the registration records for the domain names as "MSNetworks" Ė has never been known by the names "msnetworks" or "msnsearch" or by the domain names incorporating the foregoing.

(3) There is no connection, whether by acronym, plain meaning, secondary meaning or otherwise, between the Respondentís websites featuring advertisements for Internet services and other computer and electronic products and the Complainantís Mark. The Respondent is merely using the domain names to drive traffic to its own websites. Accordingly, the Respondent has no legitimate interest in the domain names. See Microsoft Corp. v. Stoneybrook, WIPO Case No. D2000-1274 (November 28, 2000), (holding that Respondent had no legitimate interest in domain name used "misleadingly to divert users to what appears to be its gambling site"); see also Universal City Studio, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (June 29, 2000), (finding that where Respondent had established a website without permission, authorization or license at a domain name confusingly similar to Complainantís trademark and had no other legitimate right to the domain name (such as a personal name), Respondent had no legitimate rights to the domain name); State Farm Automobile Ins. Co. v. Douglas LaFaive, National Arbitration Forum ("NAF") Case No. 95407 (September 27, 2000), (The unauthorized provision of competing services under a trademark ownerís mark is not a bona fide offering of goods and services).

The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts:

(1) The Respondentís apparent practice of registering domain names comprised of other companiesí well-known trademarks demonstrates its bad faith in registering the domain names. A pattern of registering variations of other partiesí well-known trademarks is "probative in showing bad faith on the part of the Respondent." Doctor.Ing.h.c. F.Porsche AG v. Stonybrook Investments Ltd., WIPO Case No. D2001-1095 (October 26, 2001).

(2) Moreover, the Complainantís Mark is well known internationally and it is inconceivable that the Respondent was not aware of the Complainantís Mark at the time it registered the domain names. See Microsoft Corporation v. Stoneybrook, supra ("Given the familiarity with Microsoft as a trademark and corporate name worldwide, it appears inconceivable to the Panelist . . . that the domain name was not registered . . . to confuse consumers."). Moreover, Respondent is deemed to have constructive notice of the Complainantís trademark rights by virtue of its federal trademark registrations for the mark. See Microsoft Corporation v. Cupcake City, supra (holding that the Respondent in that case had constructive knowledge of Microsoftís trademark rights in the Complainantís Mark based upon Microsoftís federal trademark registrations).

(3) The Respondentís failure to provide complete or accurate contact information for the domain names is indicative of bad faith. According to eNomís Whois database, the registrant has identified his e-mail address as dmullen@msnetworks.com and his telephone number as (801) 504-2500. Respondent has not provided a mailing address. Moreover, the telephone number listed connects to an unidentified answering machine. This incomplete and/or inaccurate contact information evidences the Respondentís bad faith in registering the domain names. See Ticketmaster Corp. v. Dmitri Penn, WIPO Case No. D2000-1550 (January 16, 2001), (absence of complete or correct information in the application for registration suggests a desire to create a covert position and make communication difficult and constitutes bad faith); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), (passive holding of a domain name constitutes bad faith where, inter alia, Respondent took deliberate steps to conceal its identity by providing false contact information).

(4) The Respondent has used the confusingly similar domain name <msnetworks.com> to divert Internet users attempting to find an official Microsoft MSN website to a site that offers Internet services that compete with Microsoft's own MSN services. Respondent apparently also plans to use the <msnsearch.com> domain name as a link through which Internet searching capabilities can be accessed at Respondentís "msnetworks.com" website. Microsoft also offers Internet searching capabilities at "search.msn.com," which can be accessed from the official Microsoft MSN website. Consumers who are diverted to the "msnetworks.com" website may believe they have arrived at an official Microsoft MSN website, or believe wrongly that the services provided at this website are endorsed, authorized or produced by, or affiliated with, the Complainant. Thus, the Respondent's use of the domain name is in bad faith. Even if consumer confusion is dispelled prior to purchase of services and/or products offered through the Respondentís website, Microsoft is harmed by the initial interest confusion created by the Respondent. Brookfield Communications, supra, 174 F. 3d at 1062-63 (initial interest confusion causes a sufficient trademark injury even though no actual sale is consummated).

(5) Prior panels have found that the practice of registering famous trademarks in order to divert traffic to the registrant's own website constitutes bad faith registration and use under Paragraph 4(b)(iv) of the Policy. See The Chase Manhattan Corporation et al. v. John Whitely, WIPO Case No. D2000-0346 (June 12, 2000), (Respondentís use of a domain name with the famous CHASE mark to establish a website offering services in competition with the Complainant constitutes bad faith use and registration); Big Dog Holding, Inc. v. Frank Day, NAF Case No. FA00020000093554 (March 9, 2000), (holding that diversion of traffic to infringing websites by using well-known trademarks in domain names is bad faith use).

(6) Even if the Respondent were not currently using the domain names to host active web pages, its actions still would constitute registration and use in bad faith. Respondent must have expected that any use of the domain names would cause harm to Microsoft because the domain names contain marks that are so "obviously indicative" of Microsoftís products and services that the Respondentís use of these domain names would "inevitably lead to confusion of some sort." AT&T v. Fred Rice, WIPO Case No. D2000-1276 at ß 6 (November 25, 2000), ("Nobody registers domain names for no purpose. . . . [T]he Respondent either registered them in order to sell them to the Complainant hoping that the Complainant would offer a large sum of money for them or he registered them in order to use them to connect to an internet facility"); see also eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 at ß 6 (January 18, 2001), (use of Complainantís entire mark in domain names makes it difficult to infer a legitimate use).

Accordingly, the Complainant submits that the Panel should order that the domain names be transferred to the Complainant.

B. The Respondentís Aassertions

The Respondent asserts that his domain names are not identical or confusingly similar to the Complainantís Mark. Specifically, the Respondent asserts (in pertinent part):

(1) The Complainant does not have exclusive trademark rights to the mark "MSN" in the United States, as both MSN Medical Staffing Network, Inc. with Serial Number 78027200 and MSN Communications, Inc with Serial Number 74620241 exist alongside trademarks from Claimant Respondent, and over a dozen other older "MSN" registrations by other entities, some of which could be revived.

(2) The Complainant has failed to uphold its trademark claims, notwithstanding this attempt to claim the domain names from the Respondent.

(3) The Respondent has acted carefully not to use any stylised case of the letter sequence "msn" and does not on any part of its web sites anywhere make any reference to the Complainant. The Respondent does not use any graphic or symbol that can or could be confused by any ordinary person as that of the Complainant.

(4) After searching more than 160 items using the search "msn Ė Microsoft", meaning find all web pages with "msn" but not "Microsoft", on the popular search engine Google.com, which itself ranks the listings according to the number of links to them, Respondent was able to find numerous and in some cases, blatant use of Complainantís claimed mark "msn" associated with web sites from various companies, individuals, and organizations, and not even one reference to "msnetworks.com" or "msnsearch.com."

The Respondent asserts that he has a legitimate interest or rights in the domain names. Specifically, the Respondent asserts (in pertinent part):

(1) The Respondent is in the business of assisting customers with technical and business issues, consistent with allowing advertising on its website that is appropriate for its customers: computers, software and training materials.

(2) The domain names exist for the customers of Respondent and MSNSearch.com Inc. respectively, and exist in great part to facilitate e-mail communication to the customers of these two companies.

(3) Advertising on the Respondentís website is done as a service for its customers and employees, who are able to make use of commissions generated by these vendors to reduce their net cost of the goods they are purchasing. The Respondent receives regular reporting from Linkshare as to the sales volume generated by each ad and the specific purchases, and Respondent has never had an unaccountable sale though Linkshare, which reinforces the Respondentís assertion that it is not in any way the beneficiary of some massive volume of "lost", "diverted" or "misdirected" traffic as the Complainant mistakenly claims.

The Respondent asserts that he did not register the domain names nor or use them in bad faith. Specifically, the Respondent asserts (in pertinent part):

(1) The Respondent has taken great care not to use any logotype, graphic, symbol or other visual element that is protected under trade mark, or which could in any way be confused with any symbol of Complainant, namely, the black and red "msn" device, the "multicolour butterfly", the red "msn swirl" or the like.

(2) The style of the web site, the layout of the website , the colors used in the web site and the formatting of text in the web site of Respondent is entirely different from any website of the Complainant.

(3) The Respondent clearly identifies itself on each of its web pages, and absolutely makes no reference whatsoever to the Complainant or its products or services.

(4) Complainant registered <msnsearch.net> on or about November 1, 2000, casting serious doubt on its claim that it only recently discovered that the more prominent <msnsearch.com> was registered to the Respondent, and follows National Arbitration Forum decision Fetish Factory, Inc. v. The Fetish Factory a/k/a Stanford Stuart a/k/a Pamela Hancock a/k/a Internetwork Partners, Number FA0108000099610.

(5) No constructive knowledge of use of "msn" by the Complainant could exist for the Respondent as Respondent was carrying on business as "MSN" well before the Complainant created the mark.

(6) The Complainant is not the sole trademark holder, nor did it register a trademark in the country of domicile of the Respondent as "MSN" alone until 2002, having filed an application after the domain names were registered.

(7) The tribunal should not draw the conclusion that Mullen misused any trademark or engaged in any activity as "cybersquatting." In America Online v. Mullen dba MSN and MSN Networks, WIPO Case No.D2000-1605, the Respondent for the case was Mullen, who at the time, was an employee of Complainant America Onlineís German unit, AOL Deutschland, with specific responsibility for matters including the development of an easy-to-use Internet Access Device. Mullen consulted on the design requirements, suggested names for the product and related service ("instantaol" and "aolworld") respectively, and acted to reserve the suggested domains without calling attention to AOL, thus ensuring that press speculation would be kept to a minimum. The supervisor for Mullen was in full knowledge of his actions and encouraged further work in this direction. It was decided that Mullen could best assist the company in its future efforts by not simply transferring the domain names, but by allowing AOL to win by default. In norisbank Aktiengesellschaft v. Mullen, WIPO Case No.D2000-1307, Mullen did not respond to the action for several reasons (explained in the Response).

Accordingly, the Respondent submits that the Panel should deny the request of the Complainant to transfer the domain names.

 

6. Discussion and Findings

The the Uniform Domain Name Dispute Resolution Policy ("Uniform Domain Name Dispute Resolution Policy ("UDRP")Policy"), adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.com> namespace. Before examining the substantive issues, I note that the Complainant asks, as a procedural matter, that both domain names be considered here, on the basis that the registrants of both domain names are the same. The name and other WHOIS information is identical for the domain names, and so it is appropriate for both domain names to be the subject of the one action (Rules 10 (e)).

On the substantive side, Paragraph 4.a. of the UDRP Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the UDRPPolicy:

1. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (Paragraph 4.a.(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and

3. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).

A. The Complainant has R rights in a Ttrade or Sservice Mmark, with which Respondentís Ddomain Nname is Iidentical or Cconfusingly Ssimilar.

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its "MSN" mark registered in the United States in multiple classes and in respect of multiple products and services. I conclude that the Complainant, as registered proprietor of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4.a.(i). None of the Respondentís arguments meaningfully affect the conclusion here.

The second requirement is that the domain names be identical or confusingly similar to the mark. The first domain nameó<msnetworks.com>ócomprises the Complainantís mark, together with the remainder of the word "Networks" (less the initial repeated "N"). Since "MSN" is a contraction of, and widely recognised as a contraction of, "Microsoft Network" the Respondentís assertions that the domain name is meaningfully different from the Mark is a weak argument. The addition of the trailing "s" also doesnít meaningfully alter the userís conception of the domain name. In my opinion therefore, the first domain name is confusingly similar to the Complainantís mark, since virtually all users will associate it with the Complainant. A fortiori, the second domain nameó<msnsearch.com>ócomprises the Complainantís mark and one of the main services it provides. It is, without question, confusingly similar to the Complainantís mark.

Against this, the Respondent argues that there are many other legitimate (e.g. registered trademarks with "MSN" in them) and illegitimate usages of the Complainantís Mark (e.g. "blatant" usages of "MSN" in domain names), existing both online and offline. The illegitimate usages donít affect the question asked by paragraph 4.a.(i), since the Respondent cannot look to other peopleís malfeasance as a justification for its actions. Moreover the legitimate usages do not assist the Respondent here, as the only way that this could be relevant to this part of the proceeding is if the other usages were so prevalent as to render the Respondentís usage not confusing. Since these other legitimate uses are minor (in the sense that they do not appear to be widely known) they do not affect the assessment of confusing similarity here.

I conclude therefore that the domain names are, for the purposes of the UDRPPolicy, confusingly similar to the Complainantís trademark. The Complainant has shown that it has rights in a trademark, and that the domain names are confusingly similar to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRPPolicy.

B. The Respondent has no Rrights or Llegitimate Iinterest in Rrespect of the Ddomain Nname.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRPPolicy. It makes three specific assertions that go to the issue of legitimate interest: the Respondent has no license to use "MSN", it is not known by the domain names, and there is no connection (through acronym, plain meaning, etc) between the Respondentís business and the use of the domain names.

Against this, the Respondent makes a series of (somewhat confusing) assertions as to the issue, that basically indicate that it is engaged in the business of providing some type of advertising site for its "customers and employees." The specifics of this business are not obvious, are only hinted at in the Response, do not comport with the nature of the sites in issue, and are not backed up by any evidence. Moreover, the curious change of name and address from the WHOIS record (given simply as "MSNetworks.com" with a telephone number) to the Response (given as "MicroScience Networks" with a German address) does not help the Respondentís argument that it is a legitimate business with a right or legitimate interest in the domain names.

There is sufficient basis for concluding that the Respondent has no legitimate interest, and the Respondent has provided no evidence refuting this. As a result, I conclude that the Respondent has no rights or legitimate interest in the domain names.

I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRPPolicy.

C. The Respondent Registered and is using the Domain Name in Bad Faith

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and has used it in bad faith. The Complainants make numerous submissions in relation to this point (see section 5, above) the strongest of which is the claim that the Respondent is using the domain name to attract visitors to its site, as a result of consumer confusion. This claim is based on the bad faith exemplar scenario outlined in paragraph 4.b.(iv), which reads:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."

This paragraph applies to this case. The Respondentís sites adopt banner advertising without providing any other services, or without engaging in any other legitimate business. It is clear that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the web site. This activity falls clearly into the exemplar of Paragraph 4.b.(iv), and as a result is deemed to fulfil the bad faith use and registration requirements of paragraph 4.a.(iii).

The Respondent makes many claims against this assertion, most notably that it hasnít used the Complainantís distinctive colors or devices, or that it has never identified itself as the Complainant, etc etc. All of the arguments are irrelevant to the consideration of paragraph 4.b.(iv), since the question is only whether the consumers have been attracted to the site by virtue of the confusing nature of the domain name, not by virtue of the content of the Respondentís site. The Respondentís other claims (that Mr. Mullen was wronged in previous decisions, or that it never intended to engage in bad faith) ring hollow against the demonstrable nature of its use, and the way in which the Respondent has gone about attracting users to its site through confusion. The Respondentís arguments are without merit.

There has been bad faith registration and use in this case. I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the Policy.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain names <msnetworks.com> and <msnsearch.com> be transferred to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: September 27, 2002