WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures
Case No. D2002-0567
1. The Parties
The first Complainant is Microsoft Corporation, having an office at One Microsoft Way, Redmond, Washington, 98052-6399, United States of America.
The second Complainant is MSNBC Cable LLC, a Delaware joint venture composed of the first Complainant and National Broadcasting Company, Inc., a Delaware company, having an address at 30 Rockefeller Plaza, New York, NY 10112, United States of America.
The Respondent is Seventh Summit Ventures, with an office at 15 Charter St., St. Johns, West Indies 100, Antigua and Barbuda.
2. The Domain Names and Registrar
The first domain name is .
The second domain name is .
The Registrar is Tucows, Inc., having an office at 96 Mowat Avenue, Toronto, Ontario M6K 3M1 Canada.
3. Procedural History
On June 18 and 21, 2002, an original complaint about, inter alia, the two domain names, was filed in electronic form and in hard copy, respectively, by the first and second Complainants with the WIPO Arbitration and Mediation Center ("the Center").
The Center learned from the registrars identified in the original complaint certain information about domain names and parties identified in the original complaint.
As a result of being advised by the Center of what it learned, an amended complaint about the two domain names (hereinafter, "Complaint"), was filed on June 28 and July 1, 2002, in electronic form and in hard copy, respectively, by the first and second Complainants with the Center.
The Center obtained confirmation from the Registrar that the first and second domain names were registered with it and that they were registered to the Respondent.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"), 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").
On July 2, 2002, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding by email and post to Respondent. The due date for a response was indicated as July 22, 2002.
On July 25, 2002, the Center sent Notification of Respondent Default by email to Respondent as no response had been received by the due date.
The undersigned Panelist, Mr. Mark Yang, submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence.
On July 31, 2002, the Center transmitted by email to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Mark Yang was formally appointed as the Sole Panelist and the projected Decision Date was indicated as August 14, 2002.
The Sole Panelist is satisfied with the Center�s assessment that it verified the Complaint�s compliance with the relevant requirements of the Rules, Supplemental Rules and Policy, and that this Administrative Panel (hereinafter, "Panel") was properly constituted and appointed in accordance therewith.
The Panel has not received any requests from the Complainants or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent�s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent�s response.
4. Factual Background
In the Complaint (including the Exhibits), the Complainants submitted evidence and contentions of various factual and legal conclusions based on such evidence.
Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainants, the Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. The Panel�s position on some contentions is amplified below (in Discussion and Findings).
In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts much (but not necessarily all) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence, as set out in the Complaint. The Panel accepts enough to render its decision below.
5. Parties� Contentions
A. The first and second Complainants contended that because of the nature of their business relationship and the common facts underlying their dispute with Respondent, there is sufficient common interest in the trademarks and domain names at issue, to permit joinder of their respective complaints and domain names into the single, present Complaint.
B. The first Complainant alleges that the first domain name, , is identical or confusingly similar to the trademark HOTMAIL in which it has rights, that the Respondent has no rights to or legitimate interest in the first domain name, and that the first domain name is registered and being used in bad faith by the Respondent. The first Complainant requests the transfer to it of the first domain name.
C. The second Complainant alleges that the second domain name, , is identical or confusingly similar to the trademark MSNBC, in which it has rights, that the Respondent has no rights to or legitimate interest in the second domain name, and that the second domain name is registered and being used in bad faith by the Respondent. The second Complainant requests the transfer to it of the second domain name.
D. The Respondent has not filed a response to the Complaint, and is in default.
6. Discussion and Findings
One requirement of fundamental due process is that a Respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a Respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a response to the Complaint is not due to any omission by the Center. There is sufficient evidence, in the case file provided by the Center, for the Panel to conclude the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).
Where there is default, under Rule 14(a), "the Panel shall proceed to a decision on the complaint", and under the Rule 14(b), "the Panel shall draw such inferences [from the default] as it considers appropriate". Furthermore, Rule 15(a) provides that a "Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate". Since the Respondent has not submitted any material and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.
The Panel accepts the Complainants� contention 5A above, about the joinder into the present, single Complaint.
As for Complainants� contentions 5B and 5C above, paragraph 4(a) of the Policy sets forth three elements to be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. Each of the following three elements must be established by a Complainant:
(I) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(II) Respondent has no rights or legitimate interests in respect of the domain name; and
(III) Respondent�s domain name has been registered and is being used in bad faith.
I(a). The Respondent�s first domain name is identical or confusingly similar to the trademark HOTMAIL in which the first Complainant has rights
Based on the uncontroverted evidence submitted by the first Complainant and the facts and conclusions contended for (see Factual Background, above), the Panel finds that the first Complainant:
(a) holds registration #2165601for the trademark HOTMAIL at the United States Patent and Trademark Office, issued on June 16, 1998, in association with the various advertising services identified therein (hereinafter, "Advertising Services") (although the assignment to it has been filed at the United States Patent and Trademark Office but has not yet been made public);
(b) has extensively used its trademark HOTMAIL in association with its Advertising Services in the United States of America and elsewhere, and in particular, it is using it at its "" Website; and
(c) and its Advertising Services commercialized with the trademark HOTMAIL, are famous throughout the United States of America and elsewhere.
The Panel finds that the first Complainant has significant rights in its trademark HOTMAIL in the United States of America and elsewhere.
The Panel finds that the mis-spelling of "HOTMAIL" as "wwwhotmail" is of insufficient legal significance to distinguish the latter from the former in the marketplace context of the Internet.
Accordingly, the Panel finds that the first domain name is confusingly similar to the HOTMAIL trademark in which the first Complainant has rights.
I(b). The Respondent�s second domain name is identical or confusingly similar to the trademark MSNBC in which the second Complainant has rights
Based on the uncontroverted evidence submitted by the second Complainant and the facts and conclusions contended for (see Factual Background, above), the Panel finds that the second Complainant:
(a) holds several registrations for the trademark MSNBC at the United States Patent and Trademark Office, in association with the various services identified therein (hereinafter, "News Services"), including registration #2218256 (issued on January 19, 1999) and others identified in the Complaint;
(b) has extensively used its trademark MSNBC in association with its News Services in the United States of America and elsewhere, and in particular, is using it at its "" Website;
(c) and its News Services are famous throughout the United States of America and elsewhere.
The Panel finds that the second Complainant has significant rights in its trademark MSNBC in the United States of America and elsewhere.
The Panel finds that the mis-spelling of "MSNBC" as "wwwmsnbc" is of insufficient legal significance to distinguish the latter from the former in the marketplace context of the Internet.
Accordingly, the Panel finds that the second domain name is confusingly similar to the MSNBC trademark in which the second Complainant has rights.
II. Respondent has no rights or legitimate interests in respect of the first and second domain names
Respondent has submitted no evidence, generally, and none under paragraph 4(c) of the Policy in particular, to support a finding of it having any rights or legitimate interests in respect of the domain name. This is sufficient for the Panel to accept the Complainants� contentions of II.
Furthermore, based on the uncontroverted evidence submitted by the Complainants and the factual and legal and conclusions contended for (see Factual Background, above), the Panel accepts in large measure (but not necessarily all), the evidence and contentions of factual and legal and conclusions set out in the Complaint. In particular, the Panel finds that at least (b) and (c) under I(a) and I(b) above, were likely very well known by the Respondent when it registered the first and second domain names, and that makes it very difficult, even if it had submitted evidence, for it to show it had rights or legitimate interests therein.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the first and second domain names.
III(a). Respondent�s first domain name has been registered and is being used in bad faith
Based on the uncontroverted evidence submitted by the first Complainant and the factual and legal conclusions contended for (see Factual Background, above), the Panel accepts in large measure (but not necessarily all), the evidence and contentions set out in the Complaint. In particular, the domain name was registered in bad faith because it was done with knowledge of the first Complainant�s significant rights in its HOTMAIL trademark in association with Advertising Services on the Internet. Also in particular, the domain name is being used in bad faith because, amongst other reasons, the use is to divert Internet traffic away from the first Complainant�s website to credit card solicitations and gambling businesses associated with Respondent. Upon typing the second domain name into a browser, the user is immediately redirected to the website located at , which features advertisements for a variety of credit cards that solicit Internet users to "apply now" for credit cards, all with a false association to the first Complainant and its trademark HOTMAIL.
The Panel finds that the Respondent�s first domain name has been registered and is being used in bad faith.
III(b). Respondent�s second domain name has been registered and is being used in bad faith
Based on the uncontroverted evidence submitted by the second Complainant and the factual and legal conclusions contended for (see Factual Background, above), the Panel accepts in large measure (but not necessarily all), the evidence and contentions set out in the Complaint. In particular, the domain name was registered in bad faith because it was done with knowledge of the second Complainant�s significant rights in its MSNBC trademark in association with News Services on the Internet. Also in particular, the domain name is being used in bad faith because, amongst other reasons, the use is to divert Internet traffic away from the second Complainant�s website to credit card solicitations and gambling businesses associated with Respondent. Upon typing the second domain name into a browser, the user is immediately redirected to the website located at , which features advertisements for a variety of credit cards that solicit Internet users to "apply now" for credit cards, all with a false association to the second Complainant and its trademark MSNBC.
The Panel finds that the Respondent�s second domain name has been registered and is being used in bad faith.
7. Decision
The Panel finds, within the meaning of paragraph 4(a) of the Policy, that the first domain name is confusingly similar to Complainant�s trademark HOTMAIL in which it has rights; that the Respondent has no rights or legitimate interests in respect of the first domain name; and that the first domain name has been registered and is being used in bad faith by the Respondent.
The Panel finds, within the meaning of paragraph 4(a) of the Policy, that the second domain name is confusingly similar to Complainant�s trademark MSNBC in which it has rights; that the Respondent has no rights or legitimate interests in respect of the second domain name; and that the second domain name has been registered and is being used in bad faith by the Respondent.
The Panel orders that:
(a) the domain name be transferred to the Complainant Microsoft Corporation; and
(b) the domain name be transferred to the Complainant MSNBC Cable LLC.
Mark Yang
Sole Panelist
Dated: August 14, 2002
Full & Egal Universal Law Academy