WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. My Speedy Net Phone

Case No. D2003-0359

 

1. The Parties

The Complainant is Microsoft Corporation, Redmond, Washington, USA.

The Respondent is My Speedy Net Phone, Lahore, Pakistan.

 

2. The Domain Name and Registrar

The domain name in issue is <msnphone.com> (hereafter the "domain name") which was registered with GoDaddy Software, Inc.

 

3. Procedural History

The Complaint in this case was filed in email form on May 9, 2003, and in hardcopy on May 12, 2003, with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center"). On May 13, 2003, the Center generated a Complaint Deficiency Notification as a result of a difference between the name of the registrant of the domain name and the name of the Respondent on the Complaint. On May 17, 2003, the Complainant filed an Amended Complaint rectifying the defect. On May 19, 2003, the Respondent was notified of the Amended Complaint and it filed a Response on June 3, 2003, in email form, and June 6, 2003, in hardcopy. The Complainant made a supplemental filing on June 20, 2003, and the Respondent made a supplemental filing on June 24, 2003.

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 Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules");

- Payment for filing was properly made;

- The Complaint initially failed to comply with the formal requirements, but the Amended Complaint complies with the formal requirements;

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

- The Respondent filed a Response within time;

- The Administrative Panel was properly constituted.

I accept these findings.

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

The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its Mark

The Complainant, Microsoft Corporation, is the 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.

In connection with these Internet services, Microsoft owns, among other trademarks, the trademark "MSN" (the "MSN Mark"). Microsoft has obtained trademark registrations in numerous countries for the MSN Mark in several classes of goods and services, including six United States trademark registrations for use in connection with: (i) telecommunication and electronic mail services; (ii) computer programs for transmitting and receiving electronic mail and for accessing global communications networks; (iii) providing bulletin board services and chat services by means of a global communications networks; (iv) 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 communication network; (v) and providing information via a global communications network in a wide variety of fields including news, entertainment, travel, investments, sports, computers, parenting and health.

Microsoftís Internet services include an online portal at <www.msn.com> which offers consumers, among other things, many online services, including MSN 8 Internet Services, MSN Chat, and MSN Messenger. Among the features available through the MSN Messenger service is the ability to make worldwide telephone calls over the Internet.

Microsoft has invested significant time, effort and money advertising and promoting the MSN Mark throughout the United States and the world. Using the MSN Mark, Microsoft offers localized versions of its MSN services, including MSN Hotmail and MSN Messenger, in eighteen languages to more than thirty countries worldwide. As a result, MSN has become one of the worldís most popular Internet destinations. An independent audit by PricewaterhouseCoopers LLP verified that, "MSN drew more than 300 million monthly unique users worldwide" between February 1, 2002, and May 31, 2002. Jupiter Media Metrix has reported that "MSN continues to be the most visited online destination in several markets worldwide including Australia, Canada, Ireland, New Zealand, Spain, Sweden, Switzerland and the United Kingdom."

B. The Respondent

The Respondent does not provide many details of its activities except to note that it has been in the PC to Phone business "for couple of years."

C. The Use of the Domain Name

As at the time of the Complaint the Respondent had established a commercial website located at the <msnphone.com> domain name that appeared to offer telecommunications services from an entity called "MSNphone Corporation," including "PC-to-Phone, Internet, Phone & International PC to Phone Calling." At the time of this decision the domain name did not resolve to any site.

 

5. Partiesí Contentions

A. The Complainantís Assertions

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

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

(2) The domain name is confusingly similar to the MSN Mark as well as the website address "www.msn.com." The only differences between the domain name and the Complainantís MSN Mark and the MSN website address is the addition of the word "phone" in the Respondentís domain name. Simply adding a word to the MSN Mark, however, does not eliminate the confusing similarity of the domain name. Budget Rent a Car Corp. v. Budget-Rent-A-Phone, WIPO Case No. D2001-0772 at paragraph 6 (September 11, 2001).

(3) Moreover, such a minor addition to the MSN Mark does not avoid a finding that the domain name is confusingly similar to the MSN Mark.

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 the Complainant and has not received any license or consent, express or implied, to use the MSN Mark in a domain name or in any other manner. The Respondent is not an authorized dealer or reseller of Microsoft products or services. In addition, the Complainant is informed and believes that Respondent Ė notwithstanding the fact that it identifies itself on "msnphone.com" as "MSNphone Corporation" Ė has never been known by that name.

(2) Respondent identifies itself as "My Speedy Net phone" in very small print at the bottom of its webpage. Nonetheless, the "My Speedy Net phone" name can be viewed as nothing more than a transparent attempt to manufacture a basis for use of the "MSN" acronym, given the Respondentís deliberate copying of the "look and feel" of an official MSN website. Moreover, as of May 7, 2003, the domain name <myspeedynetphone.com> was available for registration. Yet, instead of registering that domain name, Respondent chose to use a domain name incorporating the MSN Mark in an effort to trade off its fame. This does not create a legitimate interest in the "msnphone.com" domain name. Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 at ß 6 (March 22, 2002) (holding that there is no "vested right of anybody, particularly not of a competitor, to incorporate a famous trademark in its domain name in a manner confusing or diverting Internet users.").

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

(1) The MSN Mark is well known internationally and it is inconceivable that the Respondent was not aware of the MSN Mark at the time it registered the domain name. See Microsoft Corp. v. Momm Amed Ia, supra, at paragraph 6 ("Given the undoubted worldwide fame of the [MSN mark], the inference that the [msnmember.com] Domain Name was registered in bad faith is irresistible."); Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274 at paragraph 6 (November 28, 2000) ("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, the Respondentís familiarity with the MSN Mark and the official MSN website is evidenced by its incorporation of the MSN font, Butterfly Logo, and blue color scheme in its infringing website. Additionally, the Respondent is deemed to have constructive notice of Microsoftís trademark rights in the MSN Mark by virtue of Microsoftís 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 MSN Mark based upon Microsoftís federal trademark registrations); Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090 at ß 4 (April 11, 2000).

(2) It appears from the consumer complaints that Microsoft has received that Respondent registered the <msnphone.com> domain name with the intent to mislead consumers into believing that it is affiliated with, or endorsed or sponsored by, Microsoft in order to perpetuate a fraudulent telecommunications scheme. This demonstrates the Respondentís knowledge of Microsoftís trademarks and clearly demonstrates the Respondentís bad faith registration of <msnphone.com.>

(3) Additionally, the Respondentís failure to provide complete or accurate contact information for the domain name is indicative of bad faith. According to GoDaddyís Whois database, the registrant of the domain name has not provided an email address, telephone number or facsimile number. Moreover, the Respondentís geographic address lacked a street number or postal code. This incomplete and/or inaccurate contact information evidences Respondentís bad faith in registering the Infringing Domain Name. 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) Respondentís actions fall within paragraph 4(b)(iv) of the Policy because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Microsoftís mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product or service on its website.

(5) Respondent has engaged in bad faith by the practice, in and of itself, of registering Microsoftís famous trademark in order to divert traffic to the registrantís own website. 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 Claim 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). By creating a domain name that uses the MSN Mark together with the word "phone," the Respondent is confusing consumers into believing that they have reached an official Microsoft website offering telephone or telecommunications services. See Budget Rent a Car Corp, supra. In this instance the Respondent has used the confusingly similar domain name <msnphone.com> to divert Internet users attempting to find an official Microsoft website to a site that appears to be an official Microsoft site but, in fact, is not.

(The Complainant makes further allegations going to issues of initial interest confusion inter alia which are not relevant to a proceeding under the Policy and which are not pertinent to detail here.)

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

B. The Respondentsí Assertions

The Respondent asserts that the Complainantís domain name is not identical or confusingly similar to the Complainantís mark. Specifically, the Respondent asserts:

(1) The full business name of the Respondent is "My Speedy Net Phone" and "msn" is an acronym for "My Speedy Net". It is merely a coincidence that the Complainant also happens to use the alphabets "msn" in the course of its business. In fact the alphabets "msn" are generic in nature and could represent the abbreviations of several combination of words. It is specifically denied that throughout the world the alphabets "msn" are exclusively recognized with the name and business of the Complainant. The Respondent carries out its business mainly in Pakistan and Kuwait where "msn" is not recognized as a mark exclusively belonging to the Complainant. In fact, several business entities in Pakistan and Kuwait are using the alphabets "msn" for their own reasons. The main web page of the Complainant ("msn.com") provides an option titled "MSN Worldwide". It is interesting to note that the list of countries that appears if one clicks on the option button does not include the names of most of the Asian countries including those of Pakistan and Kuwait. The Respondent is not offering its services in "Australia, Canada, Ireland, New Zealand, Spain, Sweden, Switzerland and the United Kingdom" which according to the press release of Jupiter Media Metrix (relied on by the Complainant) represents the world markets. In 1-800 Flowers Inc. vs. Phonenames Limited [2000] E.T.M.R. 369, the English Court rejected the argument advanced by the claimants that use of a certain mark on a website constitutes use of that mark throughout the world because the website can be accessed throughout the world. It was held in this case that "the mere fact that websites can be accessed anywhere in the world does not mean, for trademark purposes, that the law should regard them as being used everywhere in the world. It all depends on the circumstances, particularly the intention of the website owner and what the reader will understand if he accesses the site" (page 378). This argument has also been accepted by even the US Courts (Playboy Enterprises vs. Chuckleberry Publishing Inc. (1996) 39 U. S. P. Q. 2d 1746 (District Court of the Southern District of New York)).

(2) Whether a particular name is identical or confusingly similar as to influence the public/customers is a question of fact that could only be answered by taking into account the conditions and circumstances of a given market and the characteristics of the given class of public/customers. Mr. Rahul Matthan, in his seminal work on the legal aspects of the Internet titled as The Law Relating to Computers and the Internet, (supra) at page 366 opines "in bringing actions of trademark infringement or of passing-off, the degree of similarity between the trademark and the allegedly infringing name, must be examined closely since the purchasers of computers and computer peripherals would be considered by the courts, before whom such actions of infringement are brought, to be sufficiently educated, so as not to be mislead by cheap imitations and subtle variations in branding, that less educated purchasers may not discern". The reasonable person using the Internet expects a search to produce a lot of irrelevant sites, and expects many to be foreign (Euromarket Designs vs. Peters, Unreported, July 25, 2000, cited in Kerlyís Law of Trademarks and Trade Names, Thirteenth Edition, Sweet & Maxwell, London, at page753). In the context of Pakistan and Kuwait, the alphabets "msn" are not exclusively associated with any one company, and, therefore, it could not be termed as identical or confusingly similar with the mark in which the Complainant has any rights. In any event, the Respondent provides PC to Phone services and does not offer software, operating systems, messenger, or virtual chatting rooms. The Complainant does not itself provide PC to Phone services; it merely gives its customers a choice of various phone service providers through a link provided in MSN Messenger under "Make a Phone Call" option; the services provided by the Respondent are completely different from the Complainant. As such the Respondent does not have any goodwill in the field of PC to Phone services. Interestingly, the Complainant does not provide even the choice of phone service providers to its customers in Pakistan, if any.

(3) The cases cited by the Complainant are distinguishable, inter alia, on the ground that the two companies are domiciled in two different countries, and are operating in different geographical locations and commercial markets.

The Respondent asserts that the Complainant has a legitimate interest or rights in the domain name. Specifically, the Respondent asserts:

(1) The Respondent has been in the PC to Phone business for couple of years. The domain name <msnphone.com> was registered on November 16, 2002. The name <msnphone.com> was a natural choice for the Respondent keeping in view its business name "My Speedy Net Phone" and the nature of its business. Prior to registering this name, as per the accepted practices of registration, the Respondent confirmed the availability of this name. Even if for the argumentís sake the contentions of the Complainant were accepted, such a situation would indicate an inherent unfairness and defect in the registration process of domain names. When a bona fide businessman registers a certain name which was available for registration at that time and subsequently invests time, energy and resources to establish his business under that name, it is prima facie unjust, inequitable, unfair and against the principles of propriety to allow a third person to pull the rug from under the feet of the said businessman by seeking a transfer of the registered domain name. The registration system should aid the vigilant, and provides a mechanism to pre-empt any such disputes. In any event, the registrant of a domain name must not be penalized for the defects of the registration system.

(2) The Respondent has invested substantial amount of money, efforts and time to carry out business under this name. The Respondent has been bona fide carrying out its business under this name much before the date on which the Respondent received the notice of dispute. Throughout the course of its business, the Respondent has never represented himself as the Complainant or as belonging to or associated with the Complainant. The Respondent is commonly known in the local market with the name "msnphone.com" and all the customers of the Respondent are well aware that the Respondent is an independent business entity and does not represent nor is associated with the Complainant. In fact, the Respondent is making a fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the mark at issue.

The Respondent asserts that the Complainant did not register the domain name nor is using it in bad faith. Specifically, the Respondent asserts:

(1) It is categorically denied that the Respondent in bad faith registered the domain name <msnphone.com>. The website was designed by a professional web-designer. The website designer provided the over-all design of the website and placed the logo of the butterfly on the website of the Respondent. The Respondent never had the intention to copy the "feel and look" of "msn.com". In fact, as soon as the Respondent received the electronic copy of the letter dated May 6, 2003, written by the Complainant, it made prompt arrangements for the removal of the butterfly logo from its website. The Respondent also promptly changed its registrant name with Go Daddy from "msnphone.com" to "My Speedy Net Phone" to avoid further misunderstandings. The Respondent has no obsession to maintain the present design (including the colour, look and fonts) of its website (msnphone.com) and, without prejudice to its position and as a gesture of goodwill, hereby expresses its willingness to change the same provided the Complainant withdraws its Complaint.

(2) Throughout its business dealings the Respondent has never represented itself as related to or associated with the Complainant. All the major clients of the Respondent and business contacts are well aware that the Respondent is an independent business entity unrelated to the Complainant.

(3) The Respondent vehemently denies the allegations of fraud put forward by the Complainant and reserves the right to bring a libel action against the Complainant in a Court of competent jurisdiction. Out of abundant caution, the Respondent has fully investigated the likelihood of any such instances at its end, and hereby confirms that given the degree of caution and prudence exercised by it in its policies and operations, such instances are impossible to take place. The complaints referred to by the Complainant are false, baseless, and, presumably, initiated by some business rivals of the Respondent.

(4) The bad faith in the instant case is unfortunately attributable to the Complainant itself. In collusion with the service provider of our hosting company ("4thtech.com" operating in Saudi Arabia) the DV2, Inc., and in direct violation of the Policy, the website of the Respondent was closed down on May 9, 2003, on the pretext that "Customer has removed the site from their server". This statement on which the Complainant has also relied is false. The Respondent, nor any of its representatives, instructed the removal of the website from the server, nor itself removed it. When the technical contact of the Respondent contacted the hosting company, 4thtech.com, in this regard, it stated: "the company the (sic.) represent Microsoft lower (sic.) had contact us asking to close your website and we reply them, they should contact the owner of <www.msnphone.com> to clear any problems, but they bypass us and contact directly the data center [DV2], and threat them if they didnít stop the domain, as result the company that host our machine delete your website". When the technical contact of the Respondent contacted the DV2, the DV2 replied: "Öthe info provided by Aporter was confirmed and found to be true. Due to that fact is was (sic.) going to be turned downÖif you want to settle something with Aporter on this and they agree to itÖthen fine the site can go back up". The language of the representative of the DV2 clearly suggests the possibility of collusion between the DV2 and the Complainant and unequivocally evidences an attempt by the DV2 to harass and coerce the Respondent to settle the dispute with the Complainant. DV2 and the Complainant have acted mala fide by violating the clear provisions of the Policy, by unilaterally closing down the website of the Respondent, and, thereby, causing huge losses and damage to the Respondent. The website continues to be closed and it is requested that the Administrative Panel may issue immediate interim order for the restoration of the said website till the disposal of this dispute. The current situation practically amounts to inflicting upon the Respondent a penalty, which could only be levied, if at all, after this forum decides against the Respondent. Thus, by creating the present situation, the Complainant and DV2 have directly attacked the authority of this forum and as such the situation merits immediate attention of this forum.

(5) All the services provided by the Complainant on the Internet are being offered through the sub-domains of its main domain "msn.com". Typically, the names of the sub-domains have been fashioned in this style: <autos.msn.com>, <family.msn.com>, <entertainment.msn.com>. The Complainant does not at all use the name "phone.msn.com". This is because the Complainant does not directly provide any such services. The Complainant has a sub-domain named <voice.msn.com> which is redirected to "voice.microsoft.com" site, merely an introductory page. The ordinary computer users could easily distinguish the domain name <msnphone.com> from the afore-said names, as it is a well-known fact that the services provided by the Complainant are offered through sub-domains which do not use any word after the alphabets "msn" in their names. Thus, a typical choice for a customer of the Complainant searching for any service or information on the Internet would be to type the words <autos.msn.com>, or <family.msn.com> and not <msnautos.com> or <msnfamily.com>. Therefore, the name <msnphone.com> is unlikely to confuse or attract the customers of the Complainant

(6) As of June 2, 2003, the domain name <themsn.com> is available for registration. In case the Respondent had any intention to exploit the name of the Complainant it could have easily obtained this name and carried out its business operations under this name or through a sub-domain called <phone.themsn.com>.

(7) As earlier stated the Complainant does not itself provide PC to Phone services. It merely offers a choice to avail the services of different PC to Phone service providers through a link provided in MSN Messenger under "Make a Phone Call" option. The leading PC to Phone service providers are: Net2Phone, Deltathree, and Mediaring. As of June 2, 2003, the domain names <net-2-fone.com>, <daltathree.com>, and <media-ring.com> are available for registration. If the Respondent had any mala fide intentions and wanted to exploit the name of a reputed company in the field of PC to Phone services, it could have easily registered any of the afore-said domain names, which had been a much better choice. The mere fact that the Respondent did not take any such step proves its bona fide intention, good faith and status as an honest concurrent user.

(8) The domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant.

(9) The domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct.

(10) The Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent to disrupt the Complainantís business.

(11) The domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location.

Accordingly, the Respondent submits that the Panel should deny the Complainantís requested remedy.

Further the Respondent asserts that this is a fit case for the Administrative Panel to declare it a case of reverse domain name hijacking.

 

6. Discussion and Findings

The 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 dealing with the substance of the claims here, there is one procedural matter. The Complainant provided a Supplemental Filing in the form of a Reply. The Respondent requested (by way of its own Supplemental Filing dealing with procedural matters), that this Panel disregard the Complainantís Supplemental Filing. The Rules for the Uniform Domain Name Dispute Resolution Policy provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. It is possible for the Panel to consider additional material under unusual circumstances, such as where the parties have been unable to make their cases due to evidence not available at the time of initial filing. However, here I conclude that the parties had adequate opportunity to make their cases in the Complaint and the Response and I will not consider the supplemental filings of either party.

Having resolved this initial procedural issue, there is the small matter of the substantive legal issues in this proceeding. Paragraph 4.a. of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

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)).

1. The Complainant has Rights in a Trade or Service Mark, with which Respondentís Domain Name is Identical or Confusingly Similar

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 name is identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its various "MSN" marks registered in US, 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).

The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is the Complainantís word mark, together with the word "phone". Since telecommunications is one of the products that the Complainant provides at its MSN site, and given the Complainantís fame, it is obvious that people will be deceived into believing that there is a connection between the Complainant and the domain name. Indeed there are two pieces of documentary evidence (a letter and an email) from consumers who addressed concerns to the Complainant about fraud committed by the proprietors of the domain name in circumstances where the writers believed the domain name was owned by the Complainant. It is clear that, in fact, consumers have confused the ownership of the domain name

I conclude therefore that the domain name is, for the purposes of the Policy, confusingly similar to the Complainantís mark. The Respondent makes various claims against this conclusion, arguing for example that the domicile of the Complainant and Respondent are different, or that the reasonable person wouldnít be confused by the similarity in the domain name and the Complainantís mark. However the Respondent used a number of features of the Complainantís trade dress (including additional marks and color scheme). It is clear that the Respondent actually intended to confuse consumers as to the origin of the website at the website. Its protestations to the contrary are unpersuasive.

The Complainant has shown that it has rights in a trademark, and that the domain name is identical to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

2. The Respondent has no Rights or Legitimate Interest in Respect of the Domain Name

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of assertions as to this point, detailed in section 5 above.

Against this the Respondent argues that it has legitimate business interests in the domain name. Most of this involves bare assertions and the absence of any evidence renders them nugatory. The only significant argument is that the Respondent is called "My Speedy Net Phone" which is most usefully contracted to the url <msnphone.com>. However, as the Complainant points out, there is no evidence that the Respondent trades under this name, and indeed this was not the name originally given in the whois registration. Moreover the domain name <myspeedynetphone.com> remains unclaimed. Finally there is evidence of fraud occurring through the website, where consumers are being mislead into assuming that the voice-over-IP services are provided by Microsoft.

I have no hesitation in concluding that the name "My Speedy Net Phone" is a convenient fiction, intended to provide some thin evidence for the purposes of paragraph 4(a)(ii). I further conclude that no legitimate business is being conducted at the domain name. There is no bona fide offering of services under the domain name. Nor is there any evidence of the positive defences that are detailed in paragraph 4(c) of the Policy.

As a result I conclude that the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the UDRP.

3. 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 Respondents. 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 Complainant makes a number of submissions in relation to this point (see section 5, above) the strongest of which is the claim that the Respondent registered the <msnphone.com> domain name with the intent to mislead consumers into believing that it is affiliated with, or endorsed or sponsored by, Microsoft in order to perpetuate a fraudulent telecommunications scheme. This claim is based on the bad faith exemplar scenarios 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:
Ö
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.

Based on the evidence of confusing use of multiple marks and trade dress of the Complainant, and on the evidence of fraud that has occurred at the website located at the domain name, I conclude that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website. As a result the activity is deemed to fulfil the bad faith use and registration requirements of paragraph 4(a)(iii).

I therefore conclude that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

As a final matter, I conclude that the Respondentís claims of reverse domain name hijacking are baseless.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4(a) of the Policy.

Pursuant to Paragraph 4(i) of the Policy and Rule 15 of the Rules, the requested remedy is granted.

I hereby order that the domain name <msnphone.com> be transferred to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: July 15, 2003