WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Lucas van der Molen

Case No. D2007-1360

1. The Parties

The Complainant is Microsoft Corporation, of Washington, United States of America, represented by Kennedy Van der Laan, Netherlands.

The Respondent is Lucas van der Molen, of Bantega, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <rss2msn.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2007. On September 17, 2007, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On September 18, 2007, CSL Computer Service Langenbach GmbH dba Joker.com 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”), 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 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2007. The Response was filed with the Center on October 1, 2007.

The Center appointed David Perkins as the sole panelist in this matter on October 23, 2007. 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

4.A The Complainant

4.A.1 Microsoft Corporation, the Complainant, is the largest provider of computer software and related products and services worldwide.

The Microsoft Network / MSN

4.A.2 The Complainant’s Internet services include a news and information network known as the “Microsoft Network”, or “MSN”. MSN is well-known to the general public and to Internet users. Through “www.msn.com” and other related sites which use the MSN name and mark – for example, “www.msn.nl” and “www.nl.msn.com” for The Netherlands – MSN offers consumers, inter alia, Internet search services and shopping, travel, business, health and entertainment information.

Complainant’s MSN trademark

4.A.3 The Complainant is the owner of numerous MSN trademark registrations in many jurisdictions throughout the world related to its products and services. These registrations include:

4.A.4 The Complainant states that it has spent substantial time, effort and money advertising and promoting the MSN mark throughout the world. As a consequence, the Complainant asserts that the MSN mark has become distinctive and well-known and that the Company has developed significant goodwill in that mark. The MSN mark is, the Complainant says, a well-known mark within the meaning of Art. 6 bis Paris Convention. The Complainant refers to the Decision in Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818 wherein the MSN trademark was characterized as “world famous”.

Complainant’s MSN websites

4.A.5 The Complainant maintains a website at “www.msn.com”. That website was described in the Decision in Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818 as “among the top three most widely used portal sites in the world.

4.A.6 The Complainant also maintains an RSS directory at <rss.msn.com>. RSS stands for Really Simple Syndication, which is a popular format for computers used for publishing frequently updated content, such as blog entries, news headlines or pod casts.

4.B. The Respondent

4.B.1 All that is known about the Respondent, Mr. Lucas van der Molen, is that he is the owner of the domain name in issue <rss2msn.com> which was registered on May 31, 2006. That domain name originally resolved to a website, which displayed two Microsoft logos and a log-on system.

Correspondence between the Complainant and the Respondent

4.B.2 Having noticed in June 2007 that the domain name in issue had been registered, the Complainant’s Dutch counsel sent a cease and desist letter to the Respondent dated July 4, 2007. By letter dated July 9, 2007 the Respondent replied in the following terms:

“It’s right that Rss2msn.com is registered in my name, but was not yet operational. I did not have the intention to use name/ mar/logo of Microsoft to mislead our visitors. The website has not been promoted by us in any way. Because rss2msn did not work yet. No one has used rss2msn.com. Therefore, we have not offered a service of which our visitors could think that it concerned a Microsoft service.

We have immediately ceased the use of rss2msn.com, as far as one can speak of use; the site has been blackened. By doing so we have ceased any possible infringement on the logos as well.

Hoping to have solved everything.”

That letter was written by the Respondent on notepaper of Tera.nl BV, which appears to provide online media.

4.B.3 By letter dated July 13, 2007, Microsoft’s counsel repeated its request that the Respondent should assign the domain name in issue to the Complainant. Following a telephone conversation, the Respondent replied by email on August 16, 2007, refusing to transfer the domain name. As to potential future use of the domain name, the Respondent’s email read:

“It will mention on the website that it is NOT owned by and of responsibility of Microsoft, in order to avoid misunderstanding.

When possibly using the website in the future we will not make use of copyright protected logos of Microsoft and we will keep avoiding that visitors will think that the site is created under responsibility of Microsoft.

I think that all abuses and problems have been solved this way.

I kindly ask you to confirm receipt of this message.”

4.B.4 In his Response, the Respondent says that after receipt of the cease and desist letter dated July 4, 2007, the website to which the domain name in issue resolves was changed to read:

“In order to avoid any misconceptions: MSN is a registered trademark of Microsoft. Microsoft is NOT the owner of this website and therefore not responsible for the content of this website in any way. More information about MSN and Microsoft: “www.msn.com” and “www.microsoft.com”.

This website is currently not operational.

If you were looking for a tool to send your RSS feeds to your Messenger, we suggest you to visit “www.another.com.”

5. Parties’ Contentions

5.A Complainant

5.A.1 The Complainant contends that the domain name in issue is confusingly similar to its MSN trademark for the following reasons: Policy paragraph 4(a)(i).

5.A.2 First, the MSN trademark is a distinctive and well-known trademark, which has been used for a number of years in many countries. In previous decisions under the Policy the MSN trademark has been found to be well known: for example, Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818, and also Microsoft Corporation .v. Hassan Pennock, WIPO Case No. D2005-1020.

5.A.3 Second, where – as in this case – a distinctive trademark is incorporated into a domain name, sufficient similarity is created between the trademark and the domain name as to render it confusingly similar. As authority for that proposition the Complainant cites Minnesota Mining & Manufacturing v. Jon LR, WIPO Case No. D2001.0428, where domain name in issue was <3mcare.com>.

5.A.4 Third, the addition of rss2 as a prefix to MSN does not avoid confusing similarity. This is because, as explained in paragraph 4.A.6 above, RSS is an abbreviation for Really Simple Syndication and the number “2” could refer either to a certain version of the syndication or to the word “to”. The distinguishing and dominant element of the domain name remains the Complainant’s MSN mark. Adding generic words – or, as in this case, a generic abbreviation – to a well-known trademark does not distinguish the domain name from the well-known trademark so as to avoid a finding of confusing similarity. As authority for that proposition the Complainant cites Microsoft Corporation v. S.L. Mediaweb, WIPO Case No. D2003-0538 and Microsoft Corporation v. Azra Khan, WIPO Case No. D2003-0481. In the first case, the domain name in issue was <msnporno.com> and in the second <msnindia.com>.

5.A.5 The Complainant then asserts that the Respondent has no rights or legitimate interests in respect of the domain name in issue: Policy paragraph 4(a)(ii). This is for the following reasons.

5.A.6 First, the Complainant has not licensed or otherwise authorized use by the Respondent of the MSN mark.

5.A.7 Second, the Respondent is not commonly known by the domain name.

5.A.8 Third, the MSN trademark was registered and used for many years before the domain name in issue was created on May 31, 2006. The Respondent is not using that domain name in connection with a bona fide offering of goods or services: Policy paragraph 4(c)(i). Nor, the Complainant says, is the Respondent making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers: Policy paragraph 4(c)(iii). In this respect, the Complainant refers to the Respondent’s original use of the domain name to resolve to a website displaying Microsoft logos adjacent a log-on system: paragraph 4.B.1 above.

5.A.9 Finally, the Complainant asserts that the domain name in issue was registered and is being used in bad faith: Policy paragraph 4(a)(iii). This is for the following reasons.

5.A.10 As to the first limb of paragraph 4(a)(iii) – registration in bad faith – the Complainant says that by the time the Respondent created the domain name in issue (namely, May 31, 2006), the Complainant’s MSN trademark had been registered and used for many years. That this was known by the Respondent is evidenced from his original website, which displayed two Microsoft logos: paragraphs 4.B.1 and 5.A.8 above. It is, quite simply, inconceivable – the Complainant says – that when creating the domain name in issue the Respondent was unaware of Microsoft’s MSN trademark and of the obvious similarity of that domain name with the MSN mark. In this respect, the Complainant cites Accor .v. Olivete Hotel S.L., WIPO Case No. D2003-1003. There the domain name in issue was <hotelacor.com> and the Complainant’s trademark was Accor, which mark was used to communicate through its “www.accorhotel.com” website information relating to its 4,000 hotels owned in 90 countries.

5.A.11 As to the second limb of paragraph 4(a)(iii) – use in bad faith – the Complainant asserts that the circumstances set out in paragraph 4(b)(iv) of the Policy are present in this case. This is because, at least initially, the Respondent’s website – using the domain name in issue and the two Microsoft logos – was clearly designed to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s MSN trademark by suggesting a connection with that trademark.

5.A.12 As to the current non-use of the domain name – in the form set out in paragraph 4.B.4 above – the Complainant’s case is that the circumstances here equate with non-use in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. 2000-0003. In that case, it was decided that passive holding of a domain name could amount to use in bad faith in certain circumstances. Such circumstances include (1) where the Complainant’s trademark has a strong reputation and is widely known and (2) where it is not possible to conceive of any plausible actual or contemplated use of the domain name by the Respondent that would not be illegitimate. In the latter respect, the Complainant refers to the Respondent’s August 16, 2007 email which indicates possible use of the domain name for a website in the future: paragraph 4.B.3 above.

5.A.13 The Complainant also refers to Ladbroke Group Plc. v. Sonoma International LDC, WIPO Case No. D2002-0131. In that case the domain names in issue were <ladbrokespoker.com>, <ladbrokepoker.com>, <ladbrokepoker.org> and <ladbrokepoker.net>. Although those domain names were not being used in relation to a website, such passive holding was found in that case to amount to bad faith use, the Panelist following the approach taken in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. 2000-0003.

5.B. Respondent

5.B.1 As to paragraph 4(a)(i) of the Policy, the Respondent points to the fact that RSS – an element of the domain name in issue – is not a trademark of the Complainant.

5.B.2 As to paragraph 4(a)(ii) of the Policy, the Respondent says:

“The current owner has the intention to develop activities for this website in future. Because the name, rss2msn, at that moment fully explains what the planned activity will be, it is legitimate that the current owner has the right to own this domain name.”

5.B.3 As to paragraph 4(a)(iii) of the Policy, the Respondent points to the fact that use of the domain name for the website complained of in the Complainant’s cease and desist letter of July 4, 2007, was terminated following receipt of that letter and that the website is currently non-operational and carries the wording set out in the Response: paragraph 4.B.4 above. This wording, the Respondent says, is an explicit statement designed to inform visitors to the site that it has no connection with Microsoft (the Complainant). The Respondent does, however, reserve the right to make use of the domain name in the future: see, paragraphs 4.B.3 and 5.B.2 above.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- 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.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant has established that it has rights in the MSN trademark, which trademark is well known. The fact that the dominant portion of the domain name is the well-known MSN trademark, satisfies the requirement under paragraph 4(a)(i) of the Policy of confusing similarity. Further, although RSS is an abbreviation for Really Simply Syndication and is not a trademark in which the Complainant has rights, that abbreviation is used by the Complainant in juxtaposition with the well-known MSN mark at its own RSS directory at <rss.msn.com>.

Rights or Legitimate Interests

6.6 The Respondent has not produced evidence of any of the circumstances set out in paragraph 4(c) of the Policy which can demonstrate rights to and legitimate interests in the domain name in issue. Indeed, the immediate cessation of use of the website to which the domain name originally resolved upon receipt of the Complainant’s letter dated July 4, 2007 tends to indicate an acknowledgement of a lack of such rights, However, as against that the Respondent seems to be saying that any future use of the domain name in conjunction with the disclaimer which currently appears – the text of which is set out in paragraph 4.B.4 above – would be a fair use and, as such, a use which would not mislead consumers or tarnish the MSN trademark.

6.7 But, this cannot create rights to or legitimate interests in the domain name, where that domain name is plainly confusingly similar to the Complainant’s well-known MSN trademark and where no evidence demonstrating such rights or interests is provided. A disclaimer will no create such rights or interests where none exist. In the circumstances, the Complaint satisfies the second requirement of the Policy under paragraph 4(a)(ii).

Registered and Used in Bad Faith

6.8 As to registration in bad faith, the Panel agrees with the Complainant that it is inconceivable the Respondent was not aware of the MSN trademark when creating the domain name in issue on May 31, 2006. The immediate cesser of use of the original website to which the domain name resolved after receipt of the July 4, 2007 cease and desist letter from the Complainant is also indicative of the Respondent’s acknowledgement of the Complainant’s trademark rights in the MSN mark, such that registration of a domain name having that trademark as its dominant element cannot have been in good faith.

6.9 As to use in bad faith, the Panel is satisfied that the evidence presented by the Complainant establishes bad faith use under paragraph 4(b)(iv) of the Policy as regards the original website. The remaining issue is whether the current non-use / passive use, coupled with the disclaimer, can also amount to bad faith use. Where, as in this case, the Complainant’s trademark is so well-known, it is appropriate to consider the factors proposed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. 2000-0003.. Here, notwithstanding the disclaimer, there is nothing to suggest that use by the Respondent of the domain name could be legitimate. Not only does the domain name have as its dominant feature the MSN trademark, it also mimics the Complainant’s RSS directory at “www.rss.msn.com” the only difference being the addition of the numeral 2 between “rss” and “msn”. In the circumstances, it is inconceivable that the Respondent could make any active use of the domain name (including the possible future use suggested in the Respondent’s August 16, 2007 email – paragraph 4.B.3 above) that would not be illegitimate, such as by being a passing off or an infringement of the Complainant’s rights under trademark law. A disclaimer will not cure that illegitimacy.

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, <rss2msn.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: November 2, 2007