WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. iLABtech.com, KEYWORDS, and RP Inc.
Case No. D2003-0657
1. The Parties
Complainant is Microsoft Corporation, Washington State, United States of America.
The respondents are iLABtech.com, California, United States of America (registrant of <msnkeyword.com>), KEYWORDS, Washington State, United States of America (registrant of <msnkeywords.net>) and RP Inc., California, United States of America (registrant of <msnkw.net>).
Although Respondent KEYWORDS lists the same official address as Microsoft, Complainant asserts that KEYWORDS is not affiliated with Microsoft in any manner.
2. The Domain Names and Registrar
The domain names in issue are: <msnkeyword.com>, <msnkeywords.net>, and <msnkw.net> (the "Domain Names").
The registrar is BulkRegister.com.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Microsoft’s complaint via e-mail on August 21, 2003, and in hardcopy on August 25, 2003. The Center forwarded a copy of the amended complaint to Respondents, notifying them that there was a complaint filed against them but that they had no duty to act at that time. The transmittal further stated that after the Center verified that the complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), and the Uniform Domain Name Dispute Resolution Policy (the "Policy"), it would send Respondents an official copy of the complaint after which Respondents would have 20 days to respond. The letter further directed Respondents to the web sites where the Rules, Supplemental Rules, and Policy could be found.
The Center contacted BulkRegister.com on August 22, 2003, requesting verification of the Domain Names’ registration. On August 22, 2003, the Center received confirmation from BulkRegister.com that:
1) Complainant had sent it a copy of the complaint, 2) the Domain Names were registered with BulkRegister.com, 3) Respondents are the current registrants, 4) the Policy applies to the Domain Names, and 5) the current status of the Domain Names was active. BulkRegister.com additionally confirmed the contact names, addresses, email addresses, and phone and facsimile numbers for the organization, administrative, and technical contacts for the Domain Names.
Because the original complaint did not formally name all registrants, the complaint was amended on August 28, 2003.
After verifying that the amended complaint (henceforth, the "Complaint") complied with the formal requirements of the Rules, Supplemental Rules, and Policy, the Center notified the registrants and technical contacts on September 1, 2003, of the commencement of the administrative proceeding. It notified Respondents that Complainant had submitted a complaint as described above. The notification also stated that the Complaint satisfied the formal requirements of the Policy, Rules, and Supplemental Rules and the appropriate payment had been made. Accordingly, the administrative proceeding commenced on September 1, 2003. The notification invited Respondents to reply by September 21, 2003, in accordance with Paragraph 5 of the Rules and the Supplemental Rules. Furthermore, the notification identified the consequences of default, namely that a Panel would still decide the case and that, in accordance with Rules, Paragraph 14, the Panel could draw any appropriate inferences from the default. The notification additionally notified Respondents that Complainant elected a single member panel who would be appointed within five days after the Response was due. In the event that Respondents preferred a three member panel, Respondents could so designate, with the required payment, and would have the option to nominate three panelists for possible inclusion on the panel. Finally, Respondents were notified of the identity and contact information of the Case Manager. A copy of the notification was sent by e-mail, post and facsimile to Complainant.
Having received no response to the notification by the September 22, 2003 deadline, the Center issued a Notification of Respondent Default on September 23, 2003. The notice stated that the Center would appoint a single panelist to comprise the Panel, the Panel would be informed of Respondents’ default and it would be up to the Panel’s discretion whether to consider any late-filed Response. Finally, the notice stated that the Center would continue to send case-related materials to Respondents as it deemed appropriate.
On September 29, 2003, the Parties were advised of the identity of the undersigned sole panelist. Additionally, the Center notified the Parties that the panelist had complied with Paragraph 7 of the Rules by submitting a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
4. Factual Background; Parties’ Contentions
a. The Trademark
Microsoft’s Complaint alleges that its "MSN" mark is a distinctive, federally registered, and world famous trademark. Microsoft has invested substantial resources in promoting its mark worldwide. Microsoft has registered variations of its "MSN" mark in many countries throughout the world, as shown in Exhibit H to the Complaint. Microsoft’s federal registration in the United States for its "MSN" trademark predates the Respondents’ registration of the domain names at issue here.
Additionally, Microsoft conducts business on the Internet at various domains which contain "msn" as part of the domain name (e.g. <msn.com>, <moneycentral.msn.com>, <groupsmsn.com>, <msn.net>, etc.).
b. Jurisdictional Basis
As stated above, BulkRegister verified that the Policy applies to the Domain Names. Therefore, as this proceeding is likewise governed by the Policy in accordance with it, the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide this dispute.
c. The Complaint
Microsoft asserts as follows:
• The registered mark "MSN" has worldwide recognition.
• The disputed Domain Names are confusingly similar to the trademark "MSN".
• Addition of the words "keywords" or "keyword" or the characters "kw" to the "MSN" trademark in creating a domain name does not alter the mark in a way that would reduce the likelihood of confusion.
• In addition to owning <msn.com> Microsoft is also the owner of the domain name <keywords.com>.
• Complainant has made substantial commercial use of the "MSN" mark prior to Respondents’ registration of the Domain Names.
• Respondents are controlled by the same entity, namely Lars Persson of Radical Persson, Inc. (a/k/a RP, Inc.)
• Respondent RP, Inc. d/b/a msnKEYWORDS attempted to register the trademark "MSNKEYWORDS" with the United States Patent and Trademark Office.
• Respondents are not licensees and therefore have no legitimate interest in the Domain Names or in the "MSN" mark.
• Respondents have engaged in commercial activity using the Domain Names.
• Respondents have registered and used the Domain Names in bad faith.
• Respondents failed to cease use of the "MSN" mark after receiving two cease and desist letters from the Complainant.
As noted above, Respondents have provided no response, although the deadline for doing so passed on September 22, 2003. Accordingly, the Respondents are in default. Given Respondents’ default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a).
5. Discussion and Findings
Accordingly, the Panel now proceeds to consider this matter on the merits in light of the Complaint, which is uncontested as no response was filed, the Policy, the Rules, and other applicable authority.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to each Domain Name, each of the following:
(i) The domain name in issue is identical or confusingly similar to Microsoft’s trademarks in issue here; and
(ii) Respondents have no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith.
a. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondents have failed to rebut any of the factual assertions made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondents have failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondents have any rights or legitimate interest in the Domain Names, such as use or preparation to use the Domain Names prior to notice of the dispute, being commonly known by the Domain Names, or making legitimate noncommercial or fair use of the Domain Names.
Respondents have also failed to offer evidence that they are separately controlled entities. Indeed, this Panel concludes from the similarity of the Domain Names, the overlapping contact addresses of the Respondents listed with BulkRegister, and the letter from Lars Persson (Exhibit P to the Complaint) responding to Microsoft’s letter regarding all of the Domain Names and referring to the "web sites" in the plural, that the Respondents are controlled by one entity.
b. Complainant’s Proof
(i) Domain Names Confusingly Similar to Trademark
The Domain Names are alleged to be confusingly similar to certain registered trademarks of Complainant, Microsoft. Specifically, the Domain Names add either the characters "kw" or the words "keyword" or "keywords" before the mark "MICROSOFT" and the generic top level domain (TLD) ".net" or ".com." Because web users typically add a TLD such as ".com" or ".net" to a mark when attempting to locate the mark’s owner on the Internet, and because the TLD is a functional necessity rather than an arbitrary trademark choice, the TLD is properly ignored when considering similarity. See College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001).
"Keyword" is a word used to describe a particular term used for searching or for navigating electronic information, including electronic information found on the Internet. (Exhibit J). The addition of a descriptive word to a distinctive mark may create confusion among Internet users. Microsoft Corp. v. Momm Amed Ia, WIPO Case No. D2001-1454 at paragraph 6 (March 13, 2002) (finding the <msnmember.com> domain name confusingly similar to the "MSN" mark). "[A]daptation of a registered trademark in a domain name by . . . 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) (finding the domain names <aolcasino.com>, <aolsportsbet.com>, and <aolsportsbet.net> to be confusingly similar to the AOL mark).
Because the Domain Names are confusingly similar to Complainant’s mark, the panel concludes that the requirement of Paragraph 4(a)(i) of the policy has been met.
(ii) Whether Respondents Have Rights Or Legitimate Interest In the Domain Names.
There is no evidence in the record that Respondents have any legitimate interest in the Domain Names.
Furthermore, Respondents have recognized the "MSN" mark and have promised to cease using it. (Exhibit P). The fame, distinctiveness, strength, and priority of use of Complainant’s marks, coupled with the Domain Names’ confusing similarity to Complainant’s marks and Respondents’ failure to advance any of the defenses provided in Paragraph 4(c) of the Policy, lead this Panel to conclude that Respondents have no rights or legitimate interest in the Domain Names.
(iii) Registration and Use in Bad Faith
Marks that have a "high degree of inherent or acquired distinctiveness" are entitled to a greater scope of protection. Digital City Inc. v. Smalldomain, WIPO Case No. D2000-1283 (November 6, 2000). Microsoft has demonstrated its longstanding use of the "MSN" mark and variants thereof, its very high volume of business transacted under or in connection with the mark, as well as the worldwide use and recognition of the mark, which together place its mark in the category of trademarks with a "high degree of … acquired distinctiveness." The marks, accordingly, enjoy a wide scope of protection. This fame makes it likely that Respondents were aware of the existence of the Complainant and of its trademark rights as of the time the Domain Names were initially registered.
The federal registration of the Mark prior to Respondents’ registration of the Domain Names provides further support for this conclusion. Under Section 22 of the United States Trademark Act, "[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrant’s claim of ownership thereof." As a matter of United States trademark law, therefore, it may be presumed that Respondents were on notice of Complainant’s rights in the "MSN" mark prior to registering the Domain Names. See, e.g., Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 (April 2, 2000).
In addition, one of the Respondents listed Microsoft’s address as the registrant’s contact, plainly indicating a familiarity with Microsoft. The Panel concludes that the Respondents (which the Panel has determined are controlled by the same entity) knew of Microsoft’s ownership of the "MSN" mark at the time that the <msnkeywords.net> domain name was registered.
For the above reasons, the Panel finds that Respondent had notice of the marks prior to registration of the Domain Name.
B. Evidence of Bad Faith
Policy Paragraph 4(b) sets forth four nonexclusive illustrations of situations that may be deemed to reflect "bad faith" registration and use of a domain name. In this case, it appears that the fourth such type of bad faith applies, i.e. attempting to attract, for commercial gain, Internet users to the Respondents’ web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation of the web site.
Although the Domain Names do not currently resolve to active websites, attached as Exhibits R and S to the Complaint are screenshots from the web sites to which the Domain Names <msnkeyword.com> and <msnkw.net> resolved when they were active. The screen shot from the "www.msnkeyword.com" site states that the website is under construction, but that any "KEYWORDS" will still be active. The screen shot for "www.msnkw.net" lists an account sign in a screen and a graphic of a sphere. Visible in that sphere are several known Microsoft trademarks, including the Microsoft flag logo. It is not clear from these screen shots, however, whether Respondents were engaged in using the Domain Names for commercial gain.
Microsoft offers further evidence of commercial use in what appears to be a redacted email from Microsoft’s customer service department indicating that a customer was approached by KEYWORDS and solicited to purchase a keyword from Respondents. (Exhibit L). This email is unaccompanied by either a customer name or any other facts or instances showing purported commercial activity by the Respondents involving the Domain Names. The email, although suggestive that at least one of the Domain Names was used for commercial purposes, might not alone suffice for the Panel to find commercial use and therefore bad faith under the fourth illustration in Policy Paragraph 4(b).
The illustrations provided by Paragraph 4(b) of the Policy, however, are non-exclusive. There are sufficient facts here to establish the bad faith of the Respondents in the registration and use of the Domain Names.
First, when Respondent KEYWORDS registered the domain name at <msnkeywords.net> it provided Microsoft’s address for the registrant geographic contact. As discussed above, this shows that Respondent KEYWORDS was aware of Microsoft’s ownership of the "MSN" mark at the time that it registered the domain name. Furthermore, the providing of false contact information supports a finding of bad faith. TTT MONEYCORP Limited v. Diverse Communications, WIPO Case No. D2001-0725 at paragraph 6 (July 23, 2001) ("[T]he Respondent deliberately sought to conceal its identity and contact addresses when registering domain name . . . . [T]his amounts to registration of the disputed domain name in bad faith").
Second, at the time the Respondents registered the domain name, the Respondents knew or should have known that the use of the domain names would violate Microsoft’s trademark rights, as "MSN" was a famous mark. "Evidence of bad faith includes actual or constructive knowledge of commonly known marks at the time of registration. By registering the domain name, the Respondent represented that to its knowledge the registration of the domain name will not infringe upon or otherwise violate the rights of any party." TTT Moneycorp Limited. (citing ICANN Policy Paragraph 2(b)).
Third, Microsoft is the owner of both <msn.com> and <keywords.com>. Here, Respondents registered Domain Names which were amalgams of these two domain names. Registration and use of domain names which are confusingly similar to those owned by another may show bad faith. See Pacific Telesis Group v. E Smith d/b/a The Ripe One, WIPO Case No. D2001-1053 at paragraph 6 (November 16, 2001).
Fourth, Respondents have used at least one Microsoft trademark (the Windows® logo) in the content of their web sites without permission from Microsoft, thereby improperly suggesting a non-existent affiliation.
Finally, Respondents’ failure to relinquish the Domain Names after recognizing that they had no rights to them supports a finding of bad faith. Although Respondents offered to relinquish control of the Domain Names when their registration expired, Respondent has no right to "sit on" the Domain Names during the period of their registration. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (registration together with "inaction" can constitute bad faith).
Accordingly, the Panel finds that the Respondents have engaged in bad-faith registration and use of the Domain Names.
In light of the above findings and analysis, the Panel decides that Complainant has met its burden of proving that: (1) the Domain Names are identical or confusingly similar to marks belonging to the Complainant; (2) Respondents have no rights or legitimate interest in the Domain Names; and (3) the Domain Names have been registered and are being used by Respondents in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that registration of the <msnkeyword.com>, <msnkeywords.net>, <msnkw.net> domain names be transferred to the Complainant.
Dated: November 4, 2003