The Complainant is Microsoft Corporation, Redmond of Washington, United States of America, represented by Olswang, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Timothy Stephenson of Cheshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <msnsport.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2009. On March 11, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On March 26, 2009, after several reminders, 1&1 Internet AG 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 March 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2009. The Response was filed with the Center on April 18, 2009.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on May 8, 2009. 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
The Complainant is a multinational computer technology corporation with a portfolio of brands, including the brand MSN. The Complainant has been trading under the MSN brand since August 1995. MSN is one of the Complainant's core brands and is used as a “house” mark in conjunction with words or elements to designate the Complainant's related services or sub-brands – such as MSN MESSENGER, MSN HOTMAIL, and MSN CHAT.
Since 1999, the Complainant has operated a dedicated search engine, MSN Search from its “www.msn.com” portal. The MSN Search engine allows users to access a variety of information across the Internet, including information about autos, entertainment, games, personal finance, travel, property and sports. The “www.msn.com” homepage provides a link that directs the user to the MSN branded sports news page. From that page the user can obtain information relating to a large number of different sports including football, tennis, golf and racing. In 2004 MSN and FOX Sports combined to produce a co-branded sports site “msn.foxsports.com”, providing up-to-date sports information and video content.
The MSN name and brand has become one of the biggest and most recognized brands in the world. The Complainant's “www.msn.com” website currently reaches more than 465 million unique users per month with more than 25 different information and entertainment channels. The Complainant owns a number of trade mark registrations consisting of or including the word MSN, including Community Trademark Registrations covering classes 9, 35, 36, 38, 39, 41 and 42. The filing date for at least three of these registrations precedes the Respondent's registration of the disputed domain name.
The Respondent registered the disputed domain name on January 30, 2001. As of at least January 3, 2007 the domain name was used as the URL for a webpage offering a web-search service, and links to websites providing information about various goods or services.
5. Parties' Contentions
A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to its trademark MSN because the domain name incorporates the MSN mark, which is the dominant and distinctive element of the domain name.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant has not consented to the Respondent's use of the MSN mark in the domain name, the Respondent is not related in anyway to the Complainant, the Respondent cannot show any link between the domain name and the Respondent's interests, the Respondent is not commonly known by the domain name and the Respondent has not made any non-commercial or fair use of the domain name.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent registered the domain name more than 6 years after the Complainant established the MSN brand. The Complainant's MSN mark has very high recognition by consumers. It is inconceivable that the Respondent was not aware of the Complainant's brand and rights in it. The domain name incorporates the MSN brand in conjunction with a descriptive word that is strongly associated with services provided by the Complainant under its MSN brand. The disputed domain name has been used as a URL for a webpage that intentionally seeks to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark, and this use of the domain name disrupts the business of the Complainant.
B. Respondent
The Respondent's Response consists of a number of statements made in a somewhat informal and unstructured form. The key claims made by the Respondent are as follows. The Complainant never showed any interest in the disputed domain name for 7 years and 10 months, and never communicated with the Respondent about the domain name in that time. The domain name registration was due to expire on January 30, 2009 and the Respondent communicated this fact to the Complainant. The Respondent did not renew the domain name yet the Registrar continued to identify the Respondent as the registrant of the domain name after expiry of the registration until the domain name was ‘removed from their systems' on March 14, 2009. Many domain names contain the letters ‘m', ‘s' and ‘n' in that order. The Response concludes with the statement ‘I have no access to the domain name and no control of the domain name'.
6. Discussion and Findings
A. Identical or Confusingly Similar
The mark MSN is both a registered trademark owned by the Complainant, and an unregistered trademark in which the Complainant has legal rights due to the substantial reputation in the mark that is associated with Complainant. Thus, the Complainant has a trademark to which the Policy applies. The disputed domain name incorporates fully the Complainant's mark, together with the word “sport”. The distinctive part of the domain name is MSN, the Complainant's mark. The addition of the word “sport” does not dispel the confusing similarity with the Complainant's mark. The word “sport”, describes a category of activity in respect of which the Complainant, through its “www.msn.com” and “msn.foxsports.com” web portals, provides substantial information services. Thus, the inclusion of the word “sport” in the domain name does not lessen the inevitable association of the domain name with the Complainant that results from the domain name's incorporation of the Complainant's MSN mark. This Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent is not associated with the Complainant or any business conducted by the Complainant under its MSN mark, and has not been licensed by the Complainant to use the MSN mark. The Respondent has not asserted that it has any rights or legitimate interest in the disputed domain name; indeed, the Respondent states that it did not renew the registration of the domain name and does not control it. This Panel is satisfied that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent has not asserted that it was unaware of the Complainant's MSN mark. Given the very substantial use of the mark since its establishment by the Complainant in 1995, the MSN mark had become widely known and strongly associated with the Complainant by the time the Respondent registered the disputed domain name in 2001. It is almost impossible to believe that the Respondent was unaware of the Complainant's mark when the domain name was registered. The Complainant has provided evidence, which the Respondent did not dispute, that the Respondent has used the domain name as the URL for a webpage providing a web-search service, and links to websites providing information about various goods or services. This use of the domain name is an intentional attempt to attract, for commercial gain, Internet users to that web site by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site (that being evidence of the registration and use of a domain name in bad faith, pursuant to the paragraph 4(b)(iv) of the Policy). This Panel is satisfied that the Respondent registered and is using the disputed domain name in bad faith.
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, <msnsport.com> be transferred to the Complainant.
Andrew Frederick Christie Sole Panelist
Dated: May 22, 2009
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