World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Hakan Karabidek

Case No. DMD2010-0003

1. The Parties

The Complainant is Microsoft Corporation of Redmond, Washington, United States of America, represented by Richard Law Group, Inc., United States of America.

The Respondent is Hakan Karabidek of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <msn.md> is registered with MoldData, SC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2010. On September 8, 2010, the Center transmitted by email to MoldData, SC a request for registrar verification in connection with the disputed domain name. On September 9, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2010.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on October 15, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Founded in 1975, the Complainant is a worldwide leader in software, services and solutions that help people and businesses realize their full potential.

The Complainant has registered and has been using the MSN trademark in an extensive manner. The Complainant operates the MSN portal which provides news and information, as well as other services. In connection with the MSN mark, the Complainant has also established Internet websites at domain names comprised of the MSN mark, including <msn.com> and <msn.net>.

Other UDRP panels have referred to the MSN mark as a well-known mark. See, e.g., Microsoft Corp. v. Cupcake City, WIPO Case No. D2000-0818; Microsoft Corporation v. Stop2Shop a/k/a Gene Vozzola, WIPO Case No. D2004-0510; Microsoft Corporation v. Timothy Stephenson, WIPO Case No. D2009-0310.

The Respondent appears to be an individual who resides in Istanbul, Turkey.

The disputed domain name was registered in April 2010.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

- the disputed domain name is identical to the Complainant’s world famous MSN trademark, incorporating the Complainant’s MSN mark in its entirety, followed only by the country code top level domain (“ccTLD”) for the Republic of Moldova, “.md”.

- the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by the Complainant’s MSN trademark, nor has the Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.

- the Respondent is not licensed by the Complainant to use the Complainant’s MSN trademark, nor an authorized vendor, supplier, or distributor of the Complainant’s goods and services.

- the landing page for the disputed domain name contains what purports to be a free MSN nickname generator but it also contains links to Google sponsored ads which contain a series of links to third party websites.

- apparently, the Respondent obtains click-through revenues from those sponsored links.

- the Respondent has taken the MSN trademark without authorization in order to misleadingly and deceptively divert Internet users to its web site for commercial gain.

- at the time that the Respondent registered the disputed domain name in April 2010, the Complainant’s MSN trademark was famous and familiar to countless consumers worldwide, including in Turkey where the Respondent resides.

- the Respondent intentionally adopted a domain name incorporating MSN in order to create an association with the Complainant and its products and services. The Respondent’s registration of the disputed domain name with knowledge of the Complainant’s rights in the well-known MSN trademark is evidence of bad faith registration and use.

B. Respondent

Despite being properly notified, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

A1. The Complainant holds rights in the MSN trademark

In support of its application, the Complainant has provided a list of MSN trademark registrations all over the globe. Yet, no actual certificate of any trademark registration had been provided. Nevertheless, even in the absence of certificates of the trademark registrations, the Panel is persuaded that the MSN trademark is both a registered trademark owned by the Complainant, and an unregistered trademark in which the Complainant has legal rights due to the fame and substantial reputation in the mark that is associated with the Complainant. The fact that the Complainant does not appear to hold a MSN trademark registration in Moldova has no impact on the rights of the Complainant in the said trademark. Thus, the Panel finds that the Complainant holds rights in the MSN trademark.

A2. The disputed domain name is confusingly similar or identical with the Complainant’s trademark

The Panel agrees with the Complainant that the disputed domain name is confusingly similar if not identical to the Complainant’s well-known MSN trademark. The disputed domain name incorporates the Complainant’s MSN trademark in its entirety, followed only by the country code top level domain (“ccTLD”) for the Republic of Moldova, “.md”. This addition does not render the disputed domain name distinctive from the Complainant’s trademark. It is well established that a top level domain extension, including a ccTLD, is typically disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. See World Wrestling Federation Entertainment, Inc. v. Michael Rapuano aka Bobby Rogers, WIPO Case No. DTV2001-0010; Microsoft Corp. v. DOMAeN.com, WIPO Case No. D2005-0613.

The Panel finds that the first requirement of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

According to the Complainant, the Respondent is not commonly known by the Complainant’s MSN trademark, nor is the Respondent licensed by the Complainant to use in any way the Complainant’s MSN trademark, as vendor, supplier, or distributor of the Complainant’s goods and services.

In addition, the landing page for the disputed domain name contains, according to the Complainant, what purports to be a free MSN nickname generator but also contains links to Google sponsored ads which contain a series of links to third party websites. It is the assertion of the Complainant that apparently, the Respondent obtains click-through revenues from those sponsored links.

At the time of the drafting of this decision the disputed domain name did not resolve to an active website. Nevertheless, the assertions of the Complainant are documented and the Panel accepts these evidences which represent captured images of the website content to which the disputed domain name resolved.

Based on the record, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the second requirement of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The MSN trademark enjoys a strong reputation associated with the Complainant. In this sense, it cannot be denied that the Respondent most likely knew at the time the disputed domain name was registered about this reputation.

The content of the website to which the disputed domain name resolved as described above, together with the reputation of the MSN trademark, support, in the view of the Panel, a finding of bad faith registration and use of the disputed domain name. Accordingly, the Panel agrees with the Complainant that the Respondent has taken the MSN trademark without authorization in order to create an association with the Complainant and its products and services and misleadingly and deceptively divert Internet users to its website for commercial gain. See Yahoo!, Inc. v. David Ashby, WIPO Case No. D2000-0241; and Exxon Mobil Corp. v. Joseph Fisher, WIPO Case No. D2000-1412.

Therefore, the Panel finds that the third requirement of the Policy has been met by the Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <msn.md> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Dated: October 28, 2010

 

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