WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. S.L., Mediaweb

Case No. D2003-0538

 

1. The Parties

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

The Respondent is S.L., Mediaweb, of Alicante, Spain.

 

2. The Domain Name and Registrar

The disputed domain name <msnporno.com> (the "Domain Name") is registered with Network Solutions, Inc., United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 8, 2003. On July 8, 2003, the Center transmitted by email to Arsys Internet, S.L., a request for registrar verification in connection with the Domain Name. The Center found that, according to the relevant WHOIS confirmation, the Domain Name specified in the Complaint was not registered with the registrar, Arsys Internet, S.L., and not registered by the alleged respondent, Internet Hispano, as indicated in the Complaint.

Finding that, according to the relevant WHOIS confirmation, Network Solutions, Inc. was the registrar of the Domain Name, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification concerning the Domain Name. On July 15, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On July 17, 2003, the Center transmitted by e-mail a Complaint Deficiency Notification to Complainant informing Complainant of the above deficiencies. In response to the Centerís notification that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 22, 2003, correcting the names of the Respondent and of the registrar.

The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for a response was August 14, 2003. The Respondent did not submit any response, as a consequence of which the Center notified the Respondentís default on August 18, 2003.

The Center appointed Tobias H. Zuberbühler as the sole panelist in this matter on September 3, 2003.

On September 3, 2003, the Center transmitted by e-mail to the Parties a Notification of Appointment of the Administrative Panel stating that the Projected Decision Date was September 17, 2003. The Panel finds that it was properly appointed and constituted in accordance with the Policy, the Rules, and the Supplemental Rules.

 

4. Factual Background

The following facts appear from the Complaint and its Annexes which have not been contested by the Respondent.

The Complainant is a well-known, worldwide provider of computer software and related products and services for use in the workplace, home, and education.

In connection with its Internet services, the Complainant has obtained various trademark registrations in the U.S. and abroad for the trademark MSN, inter alia, and currently has pending registration applications concerning the MSN denomination in several jurisdictions.

The Complainantís Internet services include an Internet portal <msn.com>. The Complainant also holds several country-specific domain names containing the MSN mark through which it markets its Internet services abroad, including <msn.es> for Spain. As a consequence of the Complainantís advertising and promotional activities, the Complainantís MSN Internet portals are among the worldís most popular Internet destinations with more than 300 million monthly unique users worldwide.

The Domain Name was registered by the Respondent on August 17, 2001. The Domain Name leads to a webpage with pornographic content. The websiteís banner substantially incorporates the Complainantís stylized MSN logo to which the Respondent has appended the term "porno" in a font and style very similar to that used in the Complainantís MSN logo. In addition, the Respondent has placed a multicolored rabbit head logo resembling the registered multicolored butterfly used by the Complainant in connection with its MSN logo. Moreover, the Respondent uses a visual template reminiscent of that used by the Complainant on its official MSN websites.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that:

- the Domain Name is identical or confusingly similar to trademarks in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the Domain Name; and

- the Domain Name was registered and is being used in bad faith.

Additional respective contentions of the Complainant are included in the following discussions and findings.

B. Respondent

The Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a response in accordance with the requirements under the Policy. Thus, the Complainantís allegations are deemed to be uncontested.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name at issue is <msnporno.com>. As set forth above, the non-rebutted evidence has shown that the Complainant is the holder of various national and international MSN trademarks.

Although the Domain Name is not identical to the Complainantís trademarks, there remains a strong indication of its similarity.

The question of whether the mere addition of a generic denomination to a trademark is sufficient to avoid a finding of confusing similarity has been raised in a number of previous cases. In Academy of Motion Picture Arts and Sciences v. Chego Nado, WIPO Case No. D2003-0541 (<porno-oscar.com>), with reference to Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 (<nokiagirls.com>), the panel found that the addition of a generic denomination, in particular to a famous trademark, did not suffice to avoid confusing similarity, but that the addition of, for instance, the generic word "porno" to a trademark only suggests that the services and products marketed are those of the trademark holder with a pornographic content.

Moreover, it is well-established by previous UDRP panel decisions that a domain name incorporating a distinctive trademark, such as the trademark MSN in this case, in its entirety creates sufficient similarity between the mark and the domain name as to render it confusingly similar (see, e.g., Minnesota Mining & Manufacturing v JonLR, WIPO Case No. D2001-0428, <3mcare.com>).

The general rules as set forth above are easily applicable to domain names combining a trademark and a generic denomination correlating to services or products of the trademark holder (such as Microsoft Corporation v Momm Amed Ia, WIPO Case No. D2001-1454, <msnmember.com>, or Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 relating to <sonyacademy.com> and several other domain names incorporating the SONY trademark and a generic description). While the link between the trademark holderís services and the domain name is still readily imaginable in cases such as <porno-oscar.com> (WIPO Case No. D2003-0541) or <nokiagirls.com> (WIPO Case No. D2000-0102), the Panel believes that a connection between the Complainantís MSN services and pornographic content would not easily be made by an experienced Internet user. One might argue that the more experienced Internet users, taking into account the Complainantís product range and its general impression among Internet users as the largest and most well-known software provider, might not expect the Complainant to offer pornographic content on one of its websites. Therefore, such users might not be confused as to the similarity of the Domain Name to Complainantís trademark.

There certainly exists, however, a danger of confusion with the less experienced part of the Internet community as to the association and origins of the Domain Name. Such users, taking into account the large range of services provided by the Complainant, might very well take the Domain Name for a website of the Complainant, in particular if the Respondentís website is found among others in the result list of a search engine request for the MSN services of the Complainant. Moreover, considering that the Complainant offers dating services and sex advice, inter alia, on its MSN websites, a danger of confusing similarity of the Domain Name to the MSN websites and the MSN trademark might very well exist, at least initially, for the more experienced Internet users.

For these reasons, taking into account the prevailing trend UDRP decisions and the facts of this case, the Domain Name is held by the Panel to be confusingly similar to the trademarks of the Complainant. The Complainant has thus met the burden of proof as established by subparagraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, inter alia, by showing any of the following elements:

"(i) before any notice to you [Respondent] of the dispute, your [Respondentís] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

"(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

"(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

Respondent failed to show any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent also failed to submit proof that it has been commonly known by the Domain Name. Rather to the contrary, there are strong indications that the Respondent, by registering the Domain Name, had the intent to misleadingly divert consumers for commercial gain by registering a domain name of which the distinguishing part is the Complainantís famous trademark.

The Complainant asserts moreover that the Respondent has no business or any other connection or affiliation with the Complainant. There is thus no legal and/or business relationship between the Respondent and the Complainant which could give the Respondent any right, title, or share in the denomination MSN.

In the absence of any indications as to a legitimate interest of the Respondent to use the Domain Name, the Panel concludes that the Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element to be established by the Complainant is that the Domain Name has been registered and used in bad faith.

Paragraph 4(b) lays down the following four (non-exclusive) circumstances which, if found to be present by the Panel, are deemed to provide evidence of bad faith in registering and using the Domain Name:

"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

"(ii) you [Respondent] have registered 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 you have engaged in a pattern of such conduct; or

"(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

"(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, internet users to your web site or other online location, by creating a likelihood of confusion with the complainantís 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."

The Complainant contends that the Respondent registered and used the Domain Name in bad faith.

Respondentís use of the Domain Name to market pornographic services which are not provided by the Complainant under its MSN trademark and to capitalize on the famous trademarkís goodwill strongly suggest that the Respondent, at the time of registration, knew of the Complainantís famous trademarks and domain names. In addition, the Respondentís misuse of the Complainantís altered versions of the MSN logo, butterfly, and visual templates on the Domain Nameís website show that the Respondent was very well aware of the Complainantís trademarks and domain names.

The Domain Name, containing the Complainantís trademark, is obviously used in bad faith. The Respondent takes advantage of the Domain Name to mislead and divert Internet traffic to its pornographic website and thus benefits from the large number of Internet users seeking official MSN websites.

Therefore, the Panel holds that the requirements under paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and the Respondentís bad faith registration and use of the Domain Name has been proven.

 

7. Decision

For all the foregoing reasons and facts discussed, the Panel holds that the Domain Name is confusingly similar to the registered trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is being used in bad faith.

In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel therefore requires the Domain Name <msnporno.com> to be transferred to the Complainant.

 


 

Tobias H. Zuberbühler
Sole Panelist

Dated: September 17, 2003